Roy SheinfeldDownload PDFPatent Trials and Appeals BoardAug 20, 201914481222 - (D) (P.T.A.B. Aug. 20, 2019) 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. 14/481,222 09/09/2014 Roy Sheinfeld MAIN P0308 4262 122066 7590 08/20/2019 M&B IP Analysts, LLC 500 Headquarters Plaza Morristown, NJ 07960-7070 EXAMINER TRAN, NAM T ART UNIT PAPER NUMBER 2452 NOTIFICATION DATE DELIVERY MODE 08/20/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): eofficeaction@appcoll.com michael.benshimon@gmail.com pair@mb-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROY SHEINFELD ____________ Appeal 2018-007091 Application 14/481,222 Technology Center 2400 ____________ Before JOHN A. JEFFERY, DENISE M. POTHIER, and JUSTIN BUSCH, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s invention provides offline access to content accessible over a network by (1) identifying a grant of access to a data source; (2) identifying a data element of the data source; and (3) storing the data 1 Appellant identifies the real party in interest as HARMON.IE R&D LTD. App. Br. 3. Appeal 2018-007091 Application 14/481,222 2 element that is accessible to a client node while operating offline upon determining the data element is suitable for offline viewing. See generally Abstract; Spec. ¶¶ 8–9; Fig. 2. According to one embodiment, “a size of a data element may also be treated as a parameter indicative of the suitability of that data item to be viewed offline.” Spec. ¶ 27. Claim 1 is illustrative: 1. A computerized method for providing offline access to content accessible over a network, comprising: identifying a grant of access to at least one data source of the network, wherein the access is granted to a client node; identifying a data element of one of the at least one data source; and when it is determined, based on at least one characteristic of the identified data element that is unrelated to the nature of the content currently within the data element, that the data element is suitable for offline viewing, storing the data element in a storage unit that is accessible to the client node while operating offline. THE REJECTIONS The Examiner rejected claims 1, 5, 7, 8, 11, 15, 18, and 202 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 2–3.3 2 Although the Examiner’s written description rejection omits various claims that depend from independent claims 1 and 8, we nonetheless deem this error harmless given our reversal of this rejection on its merits. 3 Throughout this opinion, we refer to (1) the Final Rejection mailed July 20, 2017 (“Final Act.”); (2) the Appeal Brief filed January 31, 2018 (“App. Br.”); (3) the Examiner’s Answer mailed May 1, 2018 (“Ans.”); and (4) the Reply Brief filed June 29, 2018. Appeal 2018-007091 Application 14/481,222 3 The Examiner rejected claims 1–3, 5–9, 11, 12, 15, and 17–20 under 35 U.S.C. § 102(a)(2) as anticipated by McLain (US 6,493,758 B1; Dec. 10, 2002). Final Act. 4–8. The Examiner rejected claims 4 and 10 under 35 U.S.C. § 103 as unpatentable over McLain and Te (US 6,785,864 B1; Aug. 31, 2004). Final Act. 8–10. The Examiner rejected claims 13, 14, and 16 under 35 U.S.C. § 103 as unpatentable over McLain and Melamed (US 2004/0128346 A1; July 1, 2004). Final Act. 10–12. THE WRITTEN DESCRIPTION REJECTION Regarding independent claim 1, the Examiner finds that Appellant’s Specification does not support the recited at least one characteristic of an identified data element that is unrelated to the nature of content currently within the data element. Final Act. 3; Ans. 41—52. Appellant argues that the subject matter of claim 1 is supported by the disclosure at various cited passages. Reply Br. 2–3 (citing Spec. ¶¶ 23–24, 26). ISSUE Under § 112(a), has the Examiner erred in rejecting claims 1, 5, 7, 8, 11, 15, 18, and 20 by finding that the recited subject matter fails to comply with the written description requirement? This issue turns on whether Appellant’s original disclosure conveys with reasonable clarity to ordinarily skilled artisans that Appellant possessed as of the filing date “at least one Appeal 2018-007091 Application 14/481,222 4 characteristic of an identified data element that is unrelated to the nature of content currently within the data element.” ANALYSIS During examination, claims are given their broadest reasonable interpretation consistent with the specification. See In re American Acad, of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We begin by noting that the last recited limitation in claim 1 is performed when it is determined, based on at least one characteristic of an identified data element that is unrelated to the nature of content currently within the data element, the data element is suitable for offline viewing. We emphasize the term “when” because the determination is a conditional limitation that need not be satisfied to meet the claim. See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792, at *3–5 (PTAB Apr. 28, 2016) (precedential)4 (holding that, in a method claim, a step reciting a condition precedent does not need to be performed if the condition precedent is not met); see also MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2111.04(II) (9th ed. Rev. 08.2017, Jan. 2018) (citing Schulhauser). Although the limitations at issue in Schulhauser were rendered conditional by the recitation of “if” (see Schulhauser, 2016 WL 6277792, at *3–5), we discern no meaningful distinction between the recitations of “if” and the term “when” in this context. Indeed, one dictionary definition of “when” is “in the event that: on 4 Available at https://www.uspto.gov/sites/default/files/documents/Ex%20parte%20Schulh auser%202016_04_28.pdf (last visited July 1, 2019); see also 2016 WL 6277792. Appeal 2018-007091 Application 14/481,222 5 condition that: IF.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 1346 (10th ed. 1993). Compare App. Br. 21 (Claims App’x) (claim 1 reciting “when it is determined . . . that the data element is suitable for offline viewing”) (emphasis added), with id. at 23 (Claims App’x) (claim 13 reciting “wherein determining if the data element is suitable for offline viewing”) (emphasis added). Accordingly, we construe “when” to be synonymous with “if’; therefore, the term “when” in the context of claim 1 renders the disputed limitation conditional. We next construe the terms “data element” and “nature” of content currently within a data element. The term “data element” is not defined in Appellant’s Specification so as to limit its interpretation. The Specification, however, indicates “[s]uch data elements may be, but are not limited to, documents, images, video clips, and combinations thereof.” Spec. ¶ 18. Our emphasis underscores that these forms of data elements are merely exemplary. Next, the term “nature” of content is not defined in Appellant’s Specification so as to limit its interpretation. The plain meaning of “nature” is “the inherent character or basic constitution of a thing.” MERRIAM- WEBSTER’S COLLEGIATE DICTIONARY 774 (10th ed. 1993). Therefore, under its broadest reasonable interpretation, the “nature” of content currently within a data element is the inherent character of content currently within the data element. Despite the claim’s breadth in light of this conditional limitation, the question remains whether Appellant’s original disclosure conveys with reasonable clarity that Appellant possessed this conditional limitation when the application was filed. To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellant had Appeal 2018-007091 Application 14/481,222 6 possession of the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 135 (Fed. Cir. 2010) (en banc). Although the written description requirement under § 112 does not demand (1) any particular form of disclosure, or (2) the Specification recite the claimed invention verbatim, a description that merely renders the invention obvious does not satisfy the requirement. See id. at 1352 (citations omitted). To be sure, Appellant’s originally-filed claims did not recite the disputed limitation. See Spec. filed Sept. 9, 2014, at 8 (Claims App’x). Appellant added the disputed limitation in an amendment filed after the present application’s filing date. See Amendment filed May 15, 2017, at 2 (Claims App’x). Nevertheless, based on the record before us, we agree with Appellant (see Reply Br. 2–3) that the original disclosure reasonably supports the disputed limitation of claim 1 which calls for, in pertinent part, “at least one characteristic of the identified data element that is unrelated to the nature of the content currently within the data element.” Here, the support for the disputed limitation is found in the disclosure discussing determining a data element’s suitability for offline viewing. See Spec. ¶ 27. Notably, the Specification describes a time pointer or “a size of a data element may [] be treated as a parameter indicative of the suitability of that data item to be viewed offline.” Id. Regarding the described “size of a data element” feature in the Specification, for example, an inherent characteristic of an 8- bit gray scale 1-pixel image having the value (0) is the color black.5 An 5 See Tarun Kumar et al., A Theory Based on Conversion of RGB image to Gray Image, INT’L J. OF COMPUTER APPLICATIONS 8 (2010) (“Kumar”) Appeal 2018-007091 Application 14/481,222 7 inherent characteristic of a 1-pixel binary image having a value (0) is the same color black.6 Although the images possess the same inherent characteristic (e.g., 1-pixel image), their sizes differ—the former has eight bits and the latter has one bit. Thus, a size of an image (the claimed “at least one characteristic of the identified data element”) is unrelated to an inherent characteristic of the content (the claimed “nature of the content”) currently within the image. Based on this disclosure, one of ordinary skill in the art would recognize that the original disclosure conveys with reasonable clarity the disputed limitation. Accordingly, we are persuaded that the Examiner erred in rejecting (1) independent claim 1; (2) independent claims 8 and 20 which recite commensurate limitations; and (3) dependent claims 5, 7, 11, 15, and 18 as failing to comply with the written description requirement for similar reasons. THE ANTICIPATION REJECTION The Examiner finds that McLain discloses the elements of independent claim 1 including, among other things, identifying a data element of one of at least one data source. Final Act. 4–6. The Examiner also finds McLain discloses determining, based on at least one characteristic of an identified data element that is unrelated to the nature of the content currently within the data element, that the data element is suitable for offline (indicating “[t]here are 256 gray levels in an 8 bit gray scale image, and the intensity of each pixel can have from 0 to 255, with 0 being black.”). 6 See id. at 7 (indicating a binary image is a “[l]ogical array containing only 0s and 1s, interpreted as black and white, respectively.”). Appeal 2018-007091 Application 14/481,222 8 viewing. Id. at 6. According to the Examiner, McLain’s user-imposed limit on the total quantity of content to download is a characteristic unrelated to the nature of the content. Ans. 4–5. Appellant argues that the Examiner’s reliance on McLain is misplaced because, among other things, McLain does not disclose determining, based on at least one characteristic of an identified data element that is unrelated to the nature of the content currently within the data element, that the data element is suitable for offline viewing. App. Br. 9–11; Reply Br. 3–6. ISSUE Under § 102, has the Examiner erred in rejecting claim 1 by finding that McLain discloses determining, based on at least one characteristic of an identified data element that is unrelated to the nature of the content currently within the data element, that the data element is suitable for offline viewing? ANALYSIS Claims 1–3, 5, 6, 15, 17, and 20 We sustain the Examiner’s anticipation rejection of independent claim 1. Final Act. 4–6. As discussed above, the disputed limitation of claim 1 is conditional and, therefore, need not be satisfied. See Schulhauser, No. 2013-007847, slip op. at 9–10, 14 (PTAB Apr. 28, 2016)). Thus, we find Appellant’s arguments regarding McLain’s alleged shortcomings in connection with this conditional limitation (see App. Br. 9–11; Reply Br. 3– 6) unavailing, for this limitation need not be satisfied to meet the claim. We are, therefore, unpersuaded of error in the Examiner’s rejection for that reason alone. Appeal 2018-007091 Application 14/481,222 9 Nevertheless, even assuming, without deciding, that the disputed limitation of claim 1 must be satisfied (which it does not), we see no error in the Examiner’s reliance on McLain’s user-imposed limit for disclosing the disputed limitation. See Final Act. 5 (citing McLain col. 8, ll. 2–4); Ans. 5 (additionally citing McLain col. 7, ll. 38–44). McLain’s Figure 6 illustrates a method 100 for downloading content from a content provider to a mobile device for offline browsing. See McLain col. 7, ll. 32–38. McLain’s content at the content provider includes image data. See id. col. 8, ll. 20–22. McLain’s “image data” includes a combination of images (the claimed “data element”). See id. at col. 3, ll. 45–47; col. 9, ll. 25–28. Accord Spec. ¶ 18 (disclosing “data elements may be, but are not limited to, documents, images, video clips, and combinations thereof”; emphases added). McLain’s user of the mobile device provides user preferences to limit the amount of image data transferred to the mobile device at step 102. See id. col. 7, ll. 38–44. Notably, McLain’s user imposes a limit as to the total quantity of image data to download from the content provider that is expressed in bytes. See id. col. 8, ll. 2–4. As discussed above, the size of an image is unrelated to the nature of the content currently within the image data. McLain, then, discloses the user-specified total quantity (the claimed “at least one characteristic”) of image data (the claimed “identified data element”) is unrelated to the nature of the content currently within the image data (the claimed “data element”). Appellant asserts McLain discloses determining if a data element is suitable for viewing on a particular mobile device based on the capabilities of the mobile device, and thus based on the nature of the content. See App. Br. 9 (citing McLain col. 11, ll. 19–22). According to Appellant, McLain’s Appeal 2018-007091 Application 14/481,222 10 determination is not based on at least one characteristic of the data element that is unrelated to the nature of the content currently within the data element. See id. at 9–10. For support, Appellant provides an example involving a 35 megabyte (MB) content item and a user setting a 50 MB limit. See id. at 10. According to Appellant, the user set limit is irrelevant to the determination that 35 MB content item is suitable for offline viewing. See id. at 11. We are unpersuaded of error. First, Appellant fails to substantiate this example with persuasive evidence, for such attorney argument—without supporting evidence—has little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Second, such argument does not address—let alone persuasively rebut—the Examiner’s reliance on McLain’s user- imposed limit for disclosing the disputed limitation as discussed above. See Final Act. 5 (citing McLain col. 8, ll. 2–4); accord Ans. 4–5 (finding although “McLain determines if particular content is suitable for offline viewing on the mobile device based on whether said mobile device can render said particular content[,] that is not the only basis used.”) Nor do we find availing Appellant’s contention that McLain’s user-imposed limit does not determine whether a “piece of content” is suitable for downloading based on the size of the piece of content per se, but instead is based on the total quantity of content a user is willing to download from a content provider. App. Br. 11; see also Reply Br. 4–5. Such a contention is not commensurate with the scope of the claim, which does not preclude McLain’s user specified total quantity of content to download as being the “at least one characteristic of” the identified single unit of data (the claimed “identified data element”) as broadly as recited. Accord Spec. ¶ 18 Appeal 2018-007091 Application 14/481,222 11 (disclosing “data elements may be, but are not limited to, documents, images, video clips, and combinations thereof.”). Moreover, McLain’s user- specified downloadable total quantity limit suggests a technique where the size of each potential file to be downloaded for offline browsing (e.g., a “characteristic of the identified data element”) would be used to determine whether the user-specified limit has been surpassed before downloading the file. See McLain col. 7, ll. 32–44, col. 8, ll. 2–4, 20–22. Lastly, we find unavailing Appellant’s contention that McLain’s user- imposed limit “is a matter of ‘desired’ to be downloaded at the current point in time, not the recited ‘suitable’ to be downloaded. The content may be perfectly suitable for downloading, but it is just indicated by the user that it is not desired to do so.” App. Br. 10; see also Reply Br. 4. McLain explicitly discloses a user “desiring” to download image data to a mobile device for offline browsing provides user preferences used to access the “desired” image data. McLain col. 7, ll. 38–41; col. 8, ll. 20–22. Thus, McLain’s image data “desired” by a user to access during offline viewing is image data “suitable” for offline viewing. See In re Schaumann, 572 F.2d 312, 317 (CCPA 1978) (determining a prior art reference can anticipate a claimed invention even though it describes the claimed subject matter using different terms). Accordingly, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 2, 3, 5, 6, 15, 17, and 20 not argued separately with particularity. Appeal 2018-007091 Application 14/481,222 12 Claims 7–9, 11, 12, 18, and 19 We sustain the Examiner’s anticipation rejection of independent claim 7 (Final Act. 4–6), which is directed to a non-transitory computer readable medium having stored thereon instructions for causing one or more processing units to execute the method according to claim 1. We also sustain the Examiner’s anticipation rejection of independent claim 8 (id.), which is directed to a system comprising a processor and memory containing instructions that, when executed by the processor, configure the system to perform a function similar to the “when” clause recited in claim 1. The broadest reasonable interpretation of an apparatus claim and a product claim with structure that performs a function that need only occur if a condition precedent is met still requires structure for performing the function should the condition occur. See Schulhauser, No. 2013-007847, slip op at 14–15 (PTAB Apr. 28, 2016). Therefore, our interpretation of claims 7 and 8 differs from our interpretation of method claim 1 because the structure, namely the hardware configured to perform the recited functions, is present in claims 7 and 8 regardless of whether the condition precedent is met and the function is actually performed. However, for the reasons discussed above when addressing claim 1, we conclude McLain anticipates claim 1, including the “when” clause. Accordingly, we are not persuaded that the Examiner erred in rejecting claims 7, 8, 9, 11, 12, 18, and 19 not argued separately with particularity. THE OBVIOUSNESS REJECTION OVER MCLAIN AND TE We sustain the Examiner’s obviousness rejection of claim 4 reciting “identifying a reconnection to the network; matching the suitable data Appeal 2018-007091 Application 14/481,222 13 element that is stored in the storage unit to a data element that exists over the web; and upon identifying a change in the data element that exists over the web, generating a notification” as being unpatentable over McLain and Te. See Final Act. 8–9. We emphasize “upon” in the last limitation of claim 4 because, similar to claim 1, the last limitation of claim 4 is a conditional limitation that need not be satisfied to meet the claim. See Schulhauser, at 9–10, 14. In short, we discern no meaningful distinction between the recitations of “if” and the term “upon” in this context. One dictionary definition of “upon” is “used as a function work to indicate . . . when something begins . . . .” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 811 (“on” prep. 3) (10th ed. 1993) (emphasis added). Thus, similar to the above discussion concerning “when,” we also construe “upon” to be synonymous with “if”; therefore, the term “upon” in the context of claim 4 renders the last limitation conditional. We further recognize Appellant’s disclosure uses the terms “upon” and “when” interchangeably. Compare Abstract (disclosing “upon” determining that a data element is suitable for offline viewing, storing the data element) with claim 1 (disclosing “when” determining that a data element is suitable for offline viewing, storing the element).7 We next construe “reconnection” in the first limitation of claim 4. Because the term “reconnection” is not defined in the Specification, we interpret the term with its plain meaning. The prefix “re-” is defined as 7 We also note other panels of this Board have construed the term “upon” as synonymous with the term “if” in similar contexts. See, e.g., Ex parte Dunstan, No. 2016-006504, 2017 WL 2265495, at *5 (PTAB 2017) (non- precedential); Ex parte Shier Jr., No. 2017-011168, 2019 WL 495529, at *15 (PTAB 2019) (non-precedential). Appeal 2018-007091 Application 14/481,222 14 “anew,” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 971; and “anew,” in turn, is defined as “in a new or different form,” id. at 44. Therefore, under its broadest reasonable interpretation, “reconnection” is a new connection. With this construction of “reconnection,” we see no error in the Examiner’s finding that Te at least suggests identifying a reconnection to a network. See Final Act. 9 (citing Te col. 8, ll. 35–36). Te’s general notification system comprises a canvasser program that (1) canvasses hyperlinked documents; (2) keeps track of hyperlinked documents that change (see Te col. 6, ll. 35–42); and (3) runs periodically (see id. col. 8, ll. 35–39). When Te’s canvasser program runs, the canvasser program compares a found hyperlinked document to a current hyperlinked document of an Internet web system for changes. See id. col. 8, ll. 42–44. Te, then, at least suggests that upon the next time the canvasser program runs, the general notification system identifies a new connection (the claimed “reconnection”) to an Internet web system (the claimed “network”) to obtain the current hyperlinked document. To the extent Appellant contends Te does not teach (1) a disconnection from the network to reconnect, and (2) a reconnection to the network of a mobile device (see App. Br. 13; Reply Br. 10), such a contention is not commensurate with the scope of the claim. Accord Ans. 7 (noting that claim 4 does not require disconnecting from the network, and that any element can reconnect to the network given the scope and breadth of the claim). Nor do we find availing Appellant’s contention there is no motivation to make the proposed combination because McLain and Te do not particularly recognize the problem solved by Appellant’s invention. See App. Br. 12–13; Reply Br. 6–7; accord In re Bigio, 381 F.3d 1320, 1325 Appeal 2018-007091 Application 14/481,222 15 (Fed. Cir. 2004) (indicating in order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. § 103, the reference must be analogous art to the claimed invention). At the outset, we note Appellant’s contention identifies one of two separate tests to determine the scope of analogous prior art. See In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006) (indicating the scope of analogous prior art falls under at least one of two separate tests—(1) whether the reference’s art is from the same field of endeavor as the invention, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved). Thus, the reference may still be proper for use in an obviousness rejection under § 103 if the reference’s art is from the same field of endeavor as the invention, regardless of the problem addressed. That is the case here with McLain. McLain generally relates to providing browsing content information that exists on a network while operating offline. See generally McLain, Abstract. Appellant’s invention generally relates to providing data that exists on a web source while operating offline. See generally Spec., Abstract; ¶ 2. Based on these similarities, we find McLain is within the same field of endeavor as the claimed subject matter. Thus, contrary to Appellant’s argument (App. Br. 12–13), McLain is analogous prior art for that reason alone and may be relied upon as a basis for an obviousness rejection regardless of whether McLain is reasonably pertinent to the particular problem with which the inventor is involved. See Kahn, 441 F.3d at 986–87; see also In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Appeal 2018-007091 Application 14/481,222 16 In addition, McLain is reasonably pertinent to the particular problem with which the inventor is involved. The Specification discusses the problem to be solved by the invention—determining which data that exists on a web source to provide while operating offline. See Spec. ¶¶ 2, 7. According to the Specification, the web source includes a data element viewed by a client node. See id. ¶ 18. If the data element has not changed for a predetermined period of time, the data element is suitable for offline viewing. See id. ¶ 19. McLain is concerned with determining which data to provide while operating offline. We find a reference that teaches determining which data to provide while operating offline would logically commend itself to a skilled person faced with problem of determining which data on a web source to provide while operating offline. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Thus, we find that McLain is analogous art with regard to Appellant’s invention. Te is also reasonably pertinent to the particular problem with which the inventor is involved. Te is directed to notifying a user of changes in a hyperlinked document on the web. See generally Te, Abstract. We find a reference that teaches notifying when changes in a hyperlinked document on the web occur would logically commend itself to a skilled person faced with problem of determining which data on a web source to provide while operating offline based on whether or not a data element has changed, as the Specification discusses (see Spec. ¶ 19). See Klein, 647 F.3d at 1348. Thus, we find that Te is analogous art with regard to Appellant’s invention. Next, Appellant contends modifying McLain’s offline viewing system with Te’s canvasser and notify programs to electronically notify when a hyperlinked document changes would result in McLain’s cache being Appeal 2018-007091 Application 14/481,222 17 updated, thereby ensuring offline viewing content is up-to-date. See App. Br. 15; Reply Br. 10. Appellant argues the claimed invention, however, is not directed to keeping offline viewing content up-to-date. See App. Br. 15; Reply Br. 10. We are not persuaded of error. First, Appellant fails to substantiate with persuasive evidence that the combination results in McLain’s cache being updated to thereby ensure offline viewing content is up-to-date. Such attorney argument—without supporting evidence—has little probative value. See Geisler, 116 F.3d at 1470. Second, even assuming Appellant provides persuasive evidence to substantiate the combination results in McLain’s cache being updated to thereby ensure offline viewing content is up-to-date, such an argument is not commensurate with the scope of the claim which does not preclude keeping offline viewing content up-to-date. Nor do we find availing Appellant’s contention the proposed rationale for combining McLain and Te is based on impermissible hindsight. See App. Br. 16–17; Reply Br. 8. On this record, we find that the Examiner’s proposed combination is supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion. See Final Act. 10 (citing Te col. 1, ll. 55–59 and concluding “it would have been obvious to one of ordinary skill in the art to modify McLain’s offline viewing system by integrating Te’s canvasser and notify programs in order to be electronically notified whenever a hyperlinked document changes.”); see also Ans. 7. Therefore, we are not persuaded that the Examiner erred in rejecting claim 4, and claim 10 not argued separately with particularity. Appeal 2018-007091 Application 14/481,222 18 THE OBVIOUSNESS REJECTION OVER MCLAIN AND MELAMAD We sustain the Examiner’s obviousness rejection of claim 13 reciting, in pertinent part, “determining if the data element is suitable for offline viewing further comprises: when the data element is changeable, determining whether the data element has been static, wherein the data element is determined to be suitable for offline viewing when the data element is determined to have been static.” See Final Act. 10–11. We emphasize the term “static” because it is not defined in Appellant’s Specification so as to limit its interpretation. The Specification, however, indicates “[i]n this example, the content is determined as static if it has not been updated in the past 3 minutes.” Spec. ¶ 26. Our emphasis underscores that this is merely exemplary. The term “static” is defined as “fixed.” MICROSOFT COMPUTER DICTIONARY 497 (5th ed. 2002). Therefore, under its broadest reasonable interpretation, “static” in claim 13 means fixed. We also emphasize both instances of “when” in claim 13 because both instances are similar to the conditional limitations discussed in Schulhauser that need not be satisfied to meet the claim. See Schulhauser, at 9–10, 14. Thus, we find Appellant’s arguments that Melamed does not disclose a data element is determined to have been static—a conditional limitation that need not be satisfied—unavailing. See App. Br. 17–18; Reply Br. 11–13. Nevertheless, even assuming, without deciding, that the recited elements of claim 13 must be met to satisfy the claim (which it does not), we see no error in the Examiner’s reliance on Melamed for at least suggesting a data element is determined to have been static. See Final Act. 10–11 (citing Melamed ¶ 58); Ans. 8–10. As the Examiner explains, “if there is no update to the page after the [‘time to live’ (TTL),] then the page is considered stale Appeal 2018-007091 Application 14/481,222 19 or ‘static’ because it has not changed.” Ans. 9. We find the Examiner’s explanation to be reasonable. Melamed’s cache reloads a page when its cached copy is not refreshed for a given time—the cached copy’s set TTL. See Melamed ¶ 58. As Melamed’s cache reloads the page several times according to the set TTL, the cache tracks the frequency at which the page changes content. See id. By tracking the frequency at which the page changes content by reloading the page several times, Melamed, then, at least suggests determining the page did not change content since its previous reloading. In other words, Melamed’s page is determined to have been fixed (i.e., “static”) since its previous reloading. Thus, contrary to Appellant’s contentions (see App. Br. 18; Reply Br. 13), Melamed’s page is determined to have been fixed (the claimed “static”) since its previous reloading regardless of whether Melamed’s cache marks the page as static or dynamic (see Melamed ¶¶ 47, 115). Appellant’s argument that Melamed does not teach changing a dynamic object’s status after the TTL expires (see Reply Br. 12) is not commensurate with the scope of the claim, which does not require changing a dynamic object’s status. Next, Appellant contends that one skilled in the art would not look to combine Melamed with McLain because “McLain and Melamed are directed to opposite ends of the Internet.” App. Br. 17; see also Reply Br. 11. According to Appellant, the Examiner does not explain how Melamed’s TTL would be employed in McLain if McLain’s offline content cannot be kept up to date given the content is offline. See App. Br. 18. We are unpersuaded of error. “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” KSR Int’l Co. v. Teleflex, Appeal 2018-007091 Application 14/481,222 20 Inc., 550 U.S. 398, 417 (2007). Despite Appellant’s contention, we see no reason why combining Melamed’s TTL with McLain’s cache would not at least contribute to keeping McLain’s cache up-to-date as the Examiner proposes (Final Act. 11)—proposed enhancements to the combination of McLain and Melamed that predictably use prior art elements according to their established functions to yield a predictable result (see KSR, 550 U.S. at 417). Nor do we find availing Appellant’s contention the proposed rationale for combining McLain and Melamed is based on impermissible hindsight. See App. Br. 18; Reply Br. 14–15. On this record, we find that the Examiner’s proposed combination is supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion. See Final Act. 11. Therefore, we are not persuaded that the Examiner erred in rejecting claim 13, and claims 14 and 16 not argued separately with particularity CONCLUSION Under § 112, the Examiner erred in rejecting claims 1, 5, 7, 8, 11, 15, 18, and 20. Under § 102, the Examiner did not err in rejecting claims 1–3, 5–9, 11, 12, 15, and 17–20. Under § 103, the Examiner did not err in rejecting claims 4, 10, 13, 14, and 16. Appeal 2018-007091 Application 14/481,222 21 DECISION The Examiner’s decision to reject claims 1–20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation