Ex Parte Rao et alDownload PDFPatent Trial and Appeal BoardOct 23, 201713744612 (P.T.A.B. Oct. 23, 2017) 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. 13/744,612 01/18/2013 Jayanthi Rao 83231518 9222 28395 7590 10/25/2017 RROOKS KTTSHMAN P C /FfTET EXAMINER 1000 TOWN CENTER HUANG, CHEN-LIANG 22ND FLOOR SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER 2458 NOTIFICATION DATE DELIVERY MODE 10/25/2017 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): docketing @brookskushman. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAYANTHI RAO, THOMAS J. GIULI, and KRISHNASWAMY VENKATESH PRASAD (Applicant: Ford Global Technologies, LLC) Appeal 2017-001232 Application 13/744,6121 Technology Center 2400 Before KRISTEN L. DROESCH, SCOTT B. HOWARD, and JOYCE CRAIG, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection of claims 1—20, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies itself, Ford Global Technologies, LLC, as the real party in interest. App. Br. 2. Appeal 2017-001232 Application 13/744,612 THE INVENTION The disclosed and claimed invention is directed to a method and apparatus for a processor configured to receive a request to provide email read-back and to receive audio data from a human email read-back party corresponding to the email. Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 A system comprising: a processor configured to: receive a request to provide email read-back; access contact information for a human email read-back party; using the contact information, determine availability of the party, by contacting the party, to read back one or more emails; deliver the one or more emails to the party for read-back; and receive audio data from the party corresponding to the delivered emails. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Hamilton US 6,981,023 B1 Dec. 27, 2005 Timmins US 2006/0023849 A1 Feb. 2, 2006 Kao US 2009/0132661 A1 May 21, 2009 Kitahara US 2011/0177795 A1 July 21, 2011 Shen US 7,999,959 B2 Aug. 16, 2011 Tan US 2013/0318177 A1 Nov. 28, 2013 2 Tan was filed on March 15, 2013, and claims benefit of a provisional application filed on May 25, 2012. 2 Appeal 2017-001232 Application 13/744,612 REJECTIONS Claims 1—20 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2—3 and 6—7. Claims 1, 3—5, 8, 10, 12—14, 17, and 19 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Timmins in view of Hamilton. Final Act. 8—11. Claims 2 and 11 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Timmins in view of Hamilton and Kitahara. Final Act. 11-12. Claims 6, 7, 15, and 16 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Timmins in view of Hamilton and Kao. Final Act. 12—13. Claims 9 and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Timmins in view of Hamilton and Tan. Final Act. 14. Claim 20 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hamilton in view of Timmins and Shen. Final Act. 15— 16. ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s arguments that the Examiner erred. In reaching this decision, we have considered all evidence presented and all arguments made by Appellant. We are not persuaded by Appellant’s arguments regarding claims 1—20, and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2—16), and (2) the reasons and rebuttals set forth in the Examiner’s 3 Appeal 2017-001232 Application 13/744,612 Answer in response to Appellant’s arguments (Ans. 2—11). We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments for emphasis as follows. Section 101 Rejection (Claims 1—20) The Examiner concludes claims 1—20 are directed to patent-ineligible subject matter. Final Act. 2—3, 6—7; Ans. 2—5. Specifically, the Examiner concludes that the pending claims are directed to the abstract idea of “a partially computerized variation of providing a conventional email read-back service,” which is an example of a method of organizing human activity. Final Act. 3 (emphasis omitted); see also Final Act. 7 (identifying the abstract idea as “a computerized variation of providing a conventional email read-back service”) (emphasis omitted); Ans. 2—3 (identifying the abstract idea as “a variation of an email recipient asking a third party to read received emails”). The Examiner further concludes that “[t]he abstract idea is described by the steps of receiving an email read-back service request, contacting a human email read-back party, delivering the email to and receiving audio from the read-back party.” Ans. 3. The Examiner also determines that the claims “do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the method and system as recited is a generic computer component that performs/automates functions (e.g., delivering emails to different parties based on the subject or content).” Final Act. 7. The Examiner further determines that the claims merely recite “generic computer functions” and, “[vjiewed as a whole, these claim elements do not provide meaningful limitations to transform the abstract idea into a patent 4 Appeal 2017-001232 Application 13/744,612 eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself.” Id. The Examiner further cites Eng,3 Bansal,4 and Friedlander5 as evidence that the step of using contact information as recited in claim 1 “is not significantly more, but is routine and conventional.” Ans. 4—5 (discussing references). Appellant argues the Examiner erred in concluding the claims are directed to an abstract idea and that the remaining steps do not account for anything more than the judicial exception/abstract idea.6 First, Appellant argues there is no reason to perform the two-step analysis. App. Br. 7; Reply Br. 3^4. According to Appellant, based on the New Interim Eligibility Guidance in the Federal Register (dated Dec. 12. 2014), when the claim “clearly does not seek to tie up any judicial exception such that others cannot practice it” a streamlined eligibility analysis can be used. App. Br. 7 (emphasis omitted); see also Reply Br. 3 (discussing the July 2015 update). Thus, according to Appellant, “[i]f the claim does not tie up the identified judicial exception so that others cannot practice it, then the claim is patent eligible.” Reply Br. 3. Second, Appellant argues because the claims do not “actually dictate[] any action, thought or human activity.” the claim cannot be directed to a method of organizing human activity. App. Br. 6; see also Reply Br 2. Third Appellant argues that the Examiner erred in concluding the claims are directed to conventional or generic steps. App. Br. 6, 7—8. 3 US 2012/0321058 Al, publ. Dec. 20, 2012 4 US 2010/0036687 Al, publ. Feb. 11, 2010. 5 US 2009/0299766 Al, publ. Dec. 3, 2009. 6 We have reorganized Appellant’s arguments to reflect whether they are directed to the first or second step of the Examiner’s analysis. 5 Appeal 2017-001232 Application 13/744,612 Specifically, Appellant argues “that at least the steps of ‘using the contact information, determine availability of the part[y], by contacting the party . . is neither a routine nor conventional computer process.” App. Br. 7—8. Additionally, Appellant argues the Examiner’s reliance on prior art evidence to demonstrate that a step is routine or conventional is not supported by law or statute. Reply Br. 4—5. Finally, Appellant avers “that this invention improves the field of digital text readback, by providing readback capable of tone or context (e.g., par [0032] of the instant specification).” App. Br. 8. Patent-eligible subject matter is defined in § 101 of the Patent Act, which recites: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. There are, however, three judicially created exceptions to the broad categories of patent-eligible subject matter in § 101: laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134 S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70-71 (2012). Although an abstract idea, itself, is patent- ineligible, an application of the abstract idea may be patent-eligible. Alice, 134 S. Ct. at 2355. The Supreme Court set forth a two-part “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Id. at 2355. First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. [Mayo,] 132 S. Ct., at 6 Appeal 2017-001232 Application 13/744,612 1296—1297. If so, we then ask, “[w]hat else is there in the claims before us?” Id., at------- , 132 S. Ct., at 1297. To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. Id., at------- , 132 S. Ct., at 1298, 1297. We have described step two of this analysis as a search for an “‘inventive concept’”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id., at------- , 132 S. Ct., at 1294. Id. “The ‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). There is no definitive rule to determine what constitutes an “abstract idea.” Rather, the Federal Circuit has explained that “both [it] and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases.” Enfish, 822 F.3d 1327, 1334 (Fed. Cir. 2016); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in determining whether claims are patent eligible under §101, “the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen—what prior cases were about, and which way they were decided”). For the reasons set forth in the Final Action and Answer, we agree with the Examiner that the claims are directed to an abstract idea and the 7 Appeal 2017-001232 Application 13/744,612 additional limitations do not recite something more so as to transform the claim into patent-eligible subject matter. Additionally, for the reasons discussed below, we are not persuaded by any of Appellant’s arguments that the Examiner erred. First, we are not persuaded by Appellant’s argument that we can ignore the two-step framework as set forth by the Supreme Court. The USPTO’s guidelines—which provide the bases for Appellant’s argument— are just that, guidelines and are not binding on this Board. Cf. In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005) (“The MPEP and Guidelines ‘are not binding on this court.’”) (citations omitted). Instead, we are bound to follow the precedent of the Supreme Court, such as Alice and Mayo, as well as decisions from our reviewing court applying Supreme Court precedent. Appellant has not identified any case law supporting the so called “streamlined eligibility analysis.” Accordingly, we will follow the two-step framework announced by the Supreme Court and not use any streamlined analysis. Moreover, although the extent of preemption is a consideration, the absence of complete preemption is not dispositive. See, e.g.,Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.”); Ultramercial Inc. v. HuluLLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013) (“[T]he Supreme Court has stated that, even if a claim does not wholly pre empt an abstract idea, it still will not be limited meaningfully if it contains only insignificant or token pre- or post-solution activity—such as identifying a relevant audience, a category of use, field of use, or technological environment.”) (citations omitted), vacated and remanded, Wildtangent, Inv. 8 Appeal 2017-001232 Application 13/744,612 v. Ultramercial LLC, 134 S. Ct. 2870 (2014) (remanding for consideration in light of Alice, 134 S. Ct. 2347). Thus, we must, under controlling precedent, consider the two-step framework of MayolAlice even when there is not preemption. Second, whether or not the claim is directed to a method for organizing human activity, we are not persuaded by Appellant’s arguments the Examiner erred in finding the claim is directed to an abstract idea because the arguments do not address the Examiner’s full recitation of the abstract idea. Although the Examiner notes that the claim is directed to a method of organizing human activities, the Examiner specifically concludes the abstract idea recited in the claims is “a partially computerized variation of providing a conventional email read-back service.” Final Act. 3 (emphasis omitted).7 Appellant does not present any argument that the Examiner’s finding was inaccurate or does not reflect an abstract idea. “If an appellant fails to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.” Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Moreover, we agree with the Examiner that the claim is directed to an abstract idea. But for the processor limitation, the claim could be performed by a human with a telephone. Claims that can be performed by a human mind—in this case with the assistance of a telephone—are directed to an 7 We acknowledge that the Examiner used several different formulations of the abstract idea. Compare Final Act. 2 (discussed above), with id. at 7 (omitting the word partially for the abstract idea) and Ans 2—3 (identifying the abstract idea as “a variation of an email recipient asking a third party to read received emails”). However, each recitation identifies substantially the same abstract idea. 9 Appeal 2017-001232 Application 13/744,612 abstract idea. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“Thus, claim 3’s steps can all be performed in the human mind. Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101. Methods which can be performed entirely in the human mind are unpatentable not because there is anything wrong with claiming mental method steps as part of a process containing non-mental steps, but rather because computational methods which can be performed entirely in the human mind are the types of methods that embody the ‘basic tools of scientific and technological work’ that are free to all men and reserved exclusively to none.”) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)) (footnote omitted)); SmartGene Inc. v. Adv. Bio. Labs. SA, 555 Fed. Appx. 950 (Fed. Cir. 2014) (holding that “that section 101 covers neither ‘mental processes’—associated with or as part of a category of ‘abstract ideas’—nor processes that merely invoke a computer and its basic functionality for implementing such mental processes, without specifying even arguably new physical components or specifying processes defined other than by the mentally performable steps”). Furthermore, the configuration of the processor does not constitute an improvement in technology that would render the claims patent-eligible. See Enfish, 822 F.3d at 1337 (finding claims directed to new type of database that represented “an improvement of an existing technology” not abstract). The Specification describes the problem addressed by the claims as allowing the email read-back “to provide tone and context.” Spec. 132. The claims do not improve computer technology; instead they merely invoke known processor configurations “merely as a tool” to address this issue of tone and context. See Enfish, 822 F ,3d at 1336; see also Broadsoft, Inc. v. Callwave 10 Appeal 2017-001232 Application 13/744,612 Comm., LLC, No. 13-711-RGA, slip op. at 9-13 (D. Del. Oct. 1, 2017) (finding claims directed to sequential dialing to solve the problem of human unavailability to be an abstract idea). Third, although Appellant argues the claims are not directed to conventional steps, Appellant does not proffer any evidence in support of its argument. It is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence). Moreover, unlike Appellant, the Examiner provided evidence to support the Examiner’s determination. See Reply Br. 4—5 (Appellant argues that it “is unaware of any law, case or statute that allows the Examiner to ‘prove’ that activity is routine and conventional merely because it is present in prior art”). Although evidence is not required to prove an element conventional or generic, Appellant does not cite any prohibition against relying on the evidence. There is nothing improper with the Examiner citing evidence to support the Examiner’s determinations. Fourth, we are not persuaded by Appellant’s statement that the claim is directed to a technological improvement. The entirety of Appellant’s final argument is as follows: “Finally, Applicant points out that this invention improves the field of digital text readback, by providing readback capable of tone or context (e.g., par [0032] of the instant specification).” App. Br. 8. This single sentence is not sufficient to raise an argument that the Examiner erred. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 requires “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding 11 Appeal 2017-001232 Application 13/744,612 elements were not found in the prior art.”); see also 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); cf In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Appellant fails to provide sufficient, persuasive argument or evidence regarding the so-called technological improvement. Moreover, even if the single sentence were sufficient, it is not persuasive. Appellant has not established that tone or context is a technological problem. Nor is it clear how providing a human reader is a technological improvement. Accordingly, we sustain the Examiner’s rejection of claims 1—20 as directed to patent—ineligible subject matter. Section 103 (Claims 1, 3, 5, 8, 10, 12, 14, 17, and 19) Appellant argues the Examiner erred in findings Timmins teaches “a processor configured to use contact information” to “determine availability of the party, by contacting the party, to read back one or more emails,” as recited in claim 1. App. Br. 9; Reply Br. 5—6. More Specifically, Appellant argues although Timmins “states that an operator can give information about email message,” it does not teach “that a human entity would read back an email.” App. Br. 9. Therefore, according to Appellant, the concept of determining the availability of a computer is meaningless. Id. Moreover, Appellant argues that even if Timmins teaches determining the availability of an information assistance provider, that is different from determining the availability of a party to read back emails. Id. 12 Appeal 2017-001232 Application 13/744,612 Appellant further argues that the teachings of Hamilton (having a person read an email) is not compatible with the teachings of Timmins (using various computer generated voices for different types of emails). Id. at 10. Finally, Appellant argues “Hamilton doesn’t cure the deficiency of Timmins with regards to the determination as to whether or not the live person is available.'1'’ Id. The Examiner finds Timmins teaches various limitations recited in claim 1, including a processor configured to “receive a request to provide email read-back,” and “access contact information for a human email read- back party [and] and using the contact information, determine availability of the party, by the contacting the party,” as recited in claim 1. Final Act. 8 (citing Timmins ^fl[ 3, 35, 53). More specifically, the Examiner finds Timmins teaches that “[t]he user can call (and determine the availability of) an information assistance provider for assistance which may include, e.g., a human operator.” Id. (emphasis omitted) (citing Timmins || 3, 35). The Examiner further finds that although Timmins teaches using a Text-to- Speech engines to provide an email read-back, Hamilton teaches “a system that provides an email read-back service to subscribers calling in. Specifically, Hamilton teaches a system in which an email is delivered as ‘live speech’ created by an operator or human person other than the message originator who is reading the email text out loud in real time.” Id. at 9 (citing Hamilton 4:36, 44-46); see also Ans. 5—7. The Examiner further finds that a person of ordinary skill in the art would have “utilize[d] the teachings of Hamilton for an operator or human person delivering email text as ‘live speech’ to a user when requested ... in order to provide a more personable experience of delivering emails to a user.” Final Act. 9. 13 Appeal 2017-001232 Application 13/744,612 Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed invention is expressly suggested in any one or ah of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Because Appellant’s arguments are directed to the references individually and not the combined teachings of the references, we are not persuaded by Appellant’s arguments that the Examiner erred. Instead, we agree with the Examiner’s findings. Specifically, we find that Timmins teaches a user determining if an information assistance operator is available by placing a telephone call to the operator. Timmins 13. Although the operator may be a non-human, Timmins expressly teaches that it could also be human operator. Timmins | 35. Timmins also teaches email read-back, albeit by a computer. Timmins H 35, 53. We further agree with the Examiner that Hamilton teaches using a human to read-back e-mail (Hamilton 4:36-47) and that when a human was used to read-back an email, the person of ordinary skill in the art would have used the teaching for Timmins to determine if the reader was available. Ans. 5—9; see also Final Act. 9. We are also not persuaded by Appellant’s arguments that the teachings of the references are incompatible. If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). 14 Appeal 2017-001232 Application 13/744,612 For example, our reviewing court held that an invention was not obvious where the prior taught the device required rigidity for operation whereas the claimed invention required resiliency. In re Ratti, 270 F.2d 810, 813 (CCPA 1959). However, as our reviewing court has explained, the proposition set forth in Ratti is inapplicable where the modified apparatus will operate “on the same principles as before.” In reMouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Umbarger, 407 F.2d 425, 430-31 (CCPA 1969)). In this case, in discussing one aspect of the invention, Timmins uses the word “may” to describe having different voices associated with different types of emails: “In accordance with an aspect of the invention, a user may select a different speech for each voice information delivery service or function, and/or in terms of urgency, context (e.g., new versus old messages; up versus down stock prices), etc. of the information to be voiced-delivered to the user.” Timmins 1 53 (emphasis added). Because the use of different voices is describes as something optional that a user may do, it is not a mandatory feature. See also Timmins claim 18 (allowing but not requiring a user to select a plurality of voice parameters), 48 (same). Because the use of specific voices depending on the context is optional, we are not persuaded that Hamilton’s use of a human email reader is incompatible with Timmins. Accordingly, we sustain the Examiner’s rejection of claim 1, along with the rejection of claims 10 and 19, which are argued on the same grounds, and dependent claims 3, 5, 8, 12, 14, and 17, which are not separately argued. See App. Br. 10 15 Appeal 2017-001232 Application 13/744,612 Section 103 (Claims 4 and 13) Appellant argues the Examiner erred in finding Hamilton teaches having the read-back party be a “friend or family member of a requesting party,” as recited in claim 4. App. Br. 10—11. Specifically, Appellant argues Hamilton teaches that the email is read back by someone other than the message originator. A teaching that something isn’t of a certain nature (i.e., the readback party isn’t the message originating party) does not automatically render all explicit claims that the something is of a specific nature (the readback party is specifically a friend or family member). Id. The Examiner finds Hamilton teaches that the reading party “is a friend or family member of a requesting party.” Final Act. 10 (citing Hamilton 4:36, 44-46). In support of that finding, the Examiner construes the term friend to “include[] a janitor, a doorman, a phone operator, or anyone who a person talks to, even if only casually, for whatever reasons— as long as it is not in a hostile situation.” Id. at 6. The Examiner further determines that the “a friend or family member” limitation “is a non functional label on the human operator and doesn’t further limit the claim.” Ans. 11. Appellant does not address the Examiner’s claim construction or determination that the claim limitation is a non-functional label that acts as mere window dressing without further limiting the claim. “If an appellant fails to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.” Frye, 94 USPQ2d at 1075. Accordingly, we are not persuaded by Appellant’s argument that the Examiner erred. Instead, for the reasons discussed below—along with the 16 Appeal 2017-001232 Application 13/744,612 reasons set forth in the Final Action and Answer—we agree with the Examiner. Further, our reviewing court has affirmed the unpatentability of claims when a limitation that is missing from the prior art is merely “window dressing” that does not affect performance of the claimed invention. Gardner v. TEC Sys., 725 F.2d 1338 (Fed. Cir. 1984). The Examiner finds, and Appellant does not dispute, the use of a friend or family member is a non-functional limitation that does not affect the performance of the claim. Accordingly, we agree with the Examiner that claim 4 is unpatentable as obvious. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”); In re Rice, 341 F.2d 309, 314 (CCPA 1965) (affirming rejection of claims when did not demonstrate that the disputed limitation “results in a difference in function or give[s] unexpected results”). Moreover, there are a finite number of groupings of people who can read-back the emails, such as friends, family members, strangers, acquaintances, and enemies. The Supreme Court has recognized that in cases such as this, When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103 KSR, 440 at 421. Petitioner does not present evidence or persuasive argument that the selection of a friend or family member would be “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog 17 Appeal 2017-001232 Application 13/744,612 Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Accordingly, we do not consider Appellant’s argument to sufficiently demonstrate the Examiner’s rejection is in error. Concluding otherwise would result not only in Appellant’s identified friend or family member distinguishing over the prior art, but equally would distinguish every other unique grouping of people. To give effect to Appellant’s argument, we would need to ignore our reviewing court’s concerns with repeated patenting. See King Pharm. Inc. v. Eon Labs., Inc., 616 F3d 1267, 1279 (Fed. Cir. 2010) (“The rationale behind this line of cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations.”); cf. Ngai, 367 F.3d at 1339 (“If we were to adopt Ngai’s position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.”). We decline to do so. Accordingly, we sustain the Examiner’s rejection of claim 4, along with the rejection of claim 13, which is argued on the same grounds. Section 103 (Claims 6 and 15) With respect to dependent claims 6 and 15, Appellant contends that because the additional reference used in the rejections of these claims (Kao) do not cure the shortcomings of the other references applied against claim 1, the Examiner failed to make a prima facie case of obviousness for these claims. App. Br. 11. Because we determine that the rejection of claim 1 is not erroneous for the reasons discussed above, we are not persuaded by Appellant’s argument the Examiner erred. Appellant further argues that “the inclusion of Kao teaching sending a text to a party to determine that party's availability makes no sense within 18 Appeal 2017-001232 Application 13/744,612 the scope of Timmins, as the combination would literally teach sending a text message to a Text To Speech processor ... to ‘check if the TTS processor was available.[’]”. Id. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” Keller, 642 F.2d at 425. Instead, the relevant issue is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973); see also Mouttet, 686 F.3d at 1332 (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc))). Moreover, as discussed above, nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425. Because Appellant’s argument is based on bodily incorporating the text message of Kao into Timmins without considering the modifications made in light of Hamilton, we are not persuaded that the Examiner erred. Instead, we agree with the Examiner that a person of ordinary skill of the art would have used the text message from Kao to notify the human read-back reader into the previously discussed Timmins/Hamilton system. Accordingly, we sustain the Examiner’s rejection of claims 6 and 15. 19 Appeal 2017-001232 Application 13/744,612 Section 103 (Claims 2, 7, 9, 11, 16, 18, and 20) With respect to dependent claims 2,1,9, 11, 16, 18, and 20, Appellants merely contend that because the additional references used in the rejections of these claims (Kitahara, Kao, Tan, and Shen) do not cure the shortcomings of the other references applied against claim 1, the Examiner failed to make a prima facie case of obviousness for these claims. App. Br. 11—12. Because we determine that the rejection of claim 1 is not erroneous for the reasons discussed above, we sustain the rejections of these claims. DECISION For the above reasons, we affirm the Examiner’s decisions rejecting claims 1—20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 20 Copy with citationCopy as parenthetical citation