Roy Sheinfeld

Patent Trials and Appeals Board

Aug 20, 2019

14481222 - (D) (P.T.A.B. Aug. 20, 2019)

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.
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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.
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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
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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.
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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
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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”)
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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.”).
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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.
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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
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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
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(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.

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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
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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).
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“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
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(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).
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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
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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.

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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
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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,
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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.

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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