Ex Parte 6658418 et al

Patent Trial and Appeal Board

Nov 25, 2014

95002018 (P.T.A.B. Nov. 25, 2014)

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.
95/002,018 06/15/2012 6658418 30693-0029RX1 6042
16275 7590 11/26/2014
HolzerIPLaw, PC
216 16th Street
Suite 1350
Denver, CO 80202
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/26/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEALS BOARD
____________________

MICROSTRATEGY INCORPORATED,1
Requester

v.

DATAMIZE, LLC and PORTAL TECHNOLOGIES, LLC,
Patent Owner and Appellants
____________________

Appeal 2014-007045
Reexamination Control 95/002,018
Patent 6,658,418 B2
Technology Center 3900
____________________

Before DENISE M. POTHIER, ANDREW J. DILLON, and
JEREMY J. CURCURI, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

1 Requester did not participle in this appeal.
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I. STATEMENT OF CASE
Thomas A. Rozylowicz of Fish & Richardson P.C. made a third party
request for inter partes reexamination on behalf of MicroStrategy Incorporated of
U.S. Patent No. 6,658,418 B2 (“the ’418 patent”) to Kevin S. Burns, entitled
Authoring System For Computer-Based Information Delivery System issued
December 2, 2003 and assigned to Datamize, LLC.
Patent Owner indicates that the ’418 patent was subject to various litigation
matters, all of which have been resolved. Patent Owner Appeal Brief “App. Br.” 3.
Patent Owner appeals from the decision in the Examiner’s Right of Appeal
Notice (RAN) rejecting claims 1–86 of the ’418 patent. Id. Patent Owner also
filed a rebuttal brief. Patent Owner Rebuttal Brief “Reb. Br.” 2–14.
The Examiner’s Answer relies on the Request for Inter Parties Review filed
June 15, 2012 (“Req.”), incorporating it by reference. See Ans. 4.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
We AFFIRM.
Illustrative claim 1 reads as follows with emphases added:
1. A method for providing customized assortment of information content
from a plurality of information providers for display in one or more
customized interface screens in a plurality of computers, comprising:
enabling selection of a customized assortment of information content
from information content from said plurality of information providers;
enabling selection of at least one interface screen element from a
plurality of pre-defined interface screen elements for inclusion in said
customized interface screens,
said screen elements having on-screen characteristics subject to
pre-defined constraints providing a generally uniform look and feel with
other interface screens of said plurality of computers; and
associating a selection of a customized assortment of information content
for a first computer of said plurality and a selection of at least one screen
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element for said first computer for display on said first computer in said one
or more customized interface screens.

App. Br. 31, Claims App’x.
A. Prior Art Relied Upon
The Examiner relies on the following as evidence of unpatentability:
Risberg
Diaz
US 5,339,392
WO 93/15466
Aug. 16 1994
Aug. 5, 1993

B. The Adopted Rejections
The Examiner maintains the following proposed rejections:
Reference(s) Basis Claims
Req.
(Ans. 4
incorporates)
Diaz § 102(b)
1–3, 7–9,
13–15, 17, 18,
24–26, 28,
30–32, 36–38,
40, 41, 48–52,
54–56, 63–73,
75–86
10–32
Risberg § 102(b) 1–65, 68–82, 85, 86 32–70
Diaz and Risberg § 103(a)
4–6, 10, 11,
20, 21, 33, 34,
44, 57, 58
70–78

App. Br. 5.
II. ISSUES ON APPEAL
The main issues raised on appeal are:
(1) Has the Examiner reasonably construed the disputed phrases found in
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claim 1 in light of the specification as would be interpreted by an ordinarily skilled
artisan?
(2) Has the Examiner erred in rejecting claim 1 under §102 by finding that
Risberg or Diaz discloses “enabling selection of at least one interface screen
element from a plurality of pre-defined interface screen elements for inclusion in
said customized interface screens, said screen elements having on-screen
characteristics subject to pre-defined constraints providing a generally uniform
look and feel with other interface screens of said plurality of computers”?
(3) Would one skilled in the art have found combining Risberg with Diaz
requires extensive reconstruction such that one skilled in the art would not have
been motivated to combine these references and render the rejected claims obvious
under § 103?

III. ANALYSIS
Claim 1 recites “enabling selection of at least one interface screen element
from a plurality of pre-defined interface screen elements for inclusion in said
customized interface screens, said screen elements having on-screen characteristics
subject to pre-defined constraints providing a generally uniform look and feel with
other interface screens of said plurality of computers.” Patent Owner asserts that
this limitation is not disclosed in either Risberg or Diaz, when properly construed.
App. Br. 5, 11, 22–23. During reexamination, a claim is given its broadest
reasonable construction “in light of the specification as it would be interpreted by
one of ordinary skill in the art.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (internal citations and quotations omitted).
On several occasions, Patent Owner asserts that the Examiner construes
(1) disputed claimed phrases “unreasonably broad” (App. Br. 6) and (2) only
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“isolated portions of the claim” (App. Br. 11), providing a piecemeal approach
to interpreting the claims rather than considering the claim recitations as a
whole. App. Br. 11–12, 15, 17–18; Reb. Br. 2–4. We see no error in the
Examiner construing each term individually and then considering the prior art
based on the collective interpretation of each individual phrase. Also, Patent
Owner discusses phrases in claim 1 in the very same manner, arguing disparate
portions of the claim rather the claim as a whole. See, e.g., App. Br. 6
(separating out particular phrases within the “enabling selection of at least one
interface screen” step and the “said screen elements having on-screen
characteristics” limitation), 12 (separately addressing the phrase “generally
uniform look and feel with other interface screens of said plurality of
computers”), 15 (separately addressing “screen elements having on-screen
characteristics subject to pre-defined constraints providing a generally uniform
look and feel”).
Patent Owner asserts that both Risberg and Diaz fail to disclose the
recitation, “pre-defined constraints providing a generally uniform look and feel
with other interface screens of said plurality of computers.” App. Br. 6–10.
We will address this argument below in more detail. Although Patent Owner
refers to portions of the ’418 patent that do not describe the “constraints” and
“look and feel” in any detail (App. Br. 6 (citing the ’418 patent 3:32–35, 56–61,
23:54–60)), Patent Owner further refers Figure 2A and to pre-defined building
blocks or screen elements, such as windows, buttons, and images, for creating
the interface screens and that include pre-defined constraints for limiting the
ability to customize attributes of each screen element. App. Br. 6. We agree
that the ’418 patent describes buttons 21 having a fixed predefined size and that
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the authoring software forces button placement generally fixed along two
adjacent edges. The ’418 patent 5:42-63; Fig. 2A; see also App. Br. 14
(quoting a portion of this passage), 64–67 (discussing automatic spacing).
Thus, the ’418 patent describes pre-defined constraints (e.g., button size, button
placement) providing a generally uniform look and feel with other interface
screens of computers.
Additionally, Patent Owner argues that an interpretation that a single
common characteristic of a single screen element of a single screen reading on
the recitation, “pre-defined constraints providing a generally uniform look and
feel with other interface screens of said plurality of computers,” is unreasonably
broad. See App. Br. 7. We agree that the phrase, “pre-defined constraints”
requires more than one constraint and the recitation, “interface screens of said
plurality of computers,” requires screens of more than one computer. The
Examiner clarified that although previously stating “the ‘same or different’
computer can be used, . . . [the] teachings [are] directed to ‘different
computers.’” Ans. 5; see also Ans. 8. Accordingly, contrary to Patent Owner’s
assertions (App. Br. 7, 12), the Examiner has not mapped the limitation of
“screen elements” to a single screen element or “interface screens of said
plurality of computers” to two interface screens on a single computer in Risberg
or Diaz.
Furthermore, any argument concerning whether the Examiner followed the
guidelines set forth in the Manual of Patent Examining Procedure (MPEP) §
2111.01 (App. Br. 13–14) or any other Office guidelines are petitionable matters
under 37 C.F.R.
§ 1.181 and will not be addressed on appeal. See MPEP §§ 1002 and 1201.
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We next turn to the art rejections.
A. Anticipation Rejection Based on Risberg
Patent Owner argues claims 1–12 and 47–60 as a group. App.
Br. 11–18. We select claim 1 as representative.
Patent Owner argues that Risberg fails to disclose the limitation,
“generally uniform look and feel with other interface screens of said plurality of
computers” found in claim 1. App. Br. 12–15; Reb. Br. 2. Specifically, Patent
Owner contends that the Risberg teaches screen interfaces for a single computer
rather than for different computers. App. Br. 14–15. Yet, the Examiner
explains that Risberg discloses using the program within a local area network
coupling workstations and personal computers and thus teaches a process for
providing customized assortment of information contents in one or more
interface screens in computers as recited in the preamble. Ans. 8 (citing
Risberg 4:35–39); see also RAN 15 (stating “different computers). Patent
Owner also recognizes that the Examiner has noted Risberg teaches a look and
feel on interface screens of different computers. See Reb. Br. 2.
Next, Patent Owner argues that Risberg fails to disclose “screen elements
having on-screen characteristics subject to pre-defined constraints providing a
generally uniform look and feel” as recited in claim 1. App. Br. 15–18; Reb.
Br. 2. Patent Owner argues that the Examiner erroneously found a single
element (i.e., a stock quote object) in Risberg meets in this limitation, when
claim 1 requires “said screen elements” establish the general look and feel.
App. Br. 15; Reb. Br. 2, 4–7. Yet, contrary to Patent Owner’s assertions (Reb.
Br. 4), the Examiner explains Risberg discloses various screen elements,
including active objects (e.g., quotes, tickers, time graphs, buttons, and page
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segments), such as, but not limited to, a number of stock quotes. Ans. 5 (citing
Risberg 7:64–8:2, col. 9), 8, 11–12. Additionally, each stock quote object
consists of various screen elements (e.g., the ticker symbol, a box, and a value).
Also, Patent Owner argues that Risberg does not provide “a generally
uniform look and feel.” App. Br. 16. Patent Owner focuses on the stock quote
object, arguing the look and feel of this object is “not to the look and feel that
screen elements create on screen interfaces of different computers.” App. Br.
16; Reb. Br. 2, 4–5. As discussed above, Risberg discloses how multiple screen
elements can be located on interface screens of different computers. The
Examiner further states that
each user will have an active document similar to Figure 1 of Risberg
with the plurality of Active Objects [icons] shown as reference item
13. The icons of the objects will be the same compared to the other
computer users. The patent owner has not shown that each user
would have a different way in which the icons are presented.

Ans. 9. We agree with the Examiner that these similarities also create screen
elements that provide a uniform document, tool, and icon layout, providing a
generally uniform look and feel with other interface screens of a plurality of
computers.
Nonetheless, expanding on the example of the stock quote object, the
Examiner explains how different computers can have interface screens with the
same general uniform look and feel. That is, a stock quote object that has
Market Type=equity and Display Style=Brief is created in two different active
documents of different host computers and would produce a screen element on
both screens of different computers that have generally the same form because
they have the same attributes (e.g., the same Market Type and Display Style).
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See Ans. 5–6, 9–10 (citing Risberg 2:27–44, 9:20–42). Additionally, the
displayed stock quote object screen elements include other screen elements,
such as a ticker symbol to the left, a value to the right, and an plus or minus
sign in front of the value. See Risberg, Fig. 1. If other active objects (e.g.,
another stock quote object, a ticker, or time graph) were created in both active
documents in the same manner, then the interface screens of these different
computers would include additional screen elements that provide an overall
generally uniform look and feel. See id.
Moreover, even in claim 1, the screen interface will only be “generally
uniform” given that the screen are to be customized as recited. Patent Owner
urges us that such uniformity should be “a high level comparison” and not “a
micro-comparison of a single element on two interface screens.” App. Br. 15;
see also Reb. Br. 6–7. However, claim 1 recites “said screen elements . . .
providing a generally uniform look and feel with other interface screens of said
plurality of computers” and not the interface screens themselves provide a
generally uniform look and feel. The Examiner highlights this difference by
stating that the claim 1 does not recite that the “look and feel” is a macro or
high level comparison. RAN 12–13. We further add that the phrase, “generally
uniform look and feel” is arguably a subjective phrase, given that the line
between a generally uniform “look and feel” and a non-uniform “look and feel”
of screen elements may differ from user to user. Yet, as noted above, Risberg
discloses a general look and feel even on a macro level.
Patent Owner further argues that the Risberg imposes a “post-selection
defined parameters on its interface screen” with no pre-defined constraints for
the screen elements. App. Br. 8–9, 16–17; Reb. Br. 3, 5–6. We disagree. First,
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like claim 1, Risberg teaches “enabling selection of at least one interface screen
element . . . for inclusion in said customized interface screens” when the user
selects an active object to create on a customized interface screen. Second, as
the Examiner explains, Risberg discloses the attributes of an object are subject
pre-constraints, because only a limited number of specific styles are offered.
Ans. 6–7, 13–14. For example, using the stock quote object, the program only
offers four types of “Market Type” (e.g., equity, option , future, or shredder)
and two types of “Display Style” (e.g., brief or regular style). Additionally, the
Examiner states that the Market Type and Display Style are pre-defined
constraints in that they have “pre-defined limitations of variability or a limited
range or choice[].” Ans. 14.
Furthermore, Risberg shows other “pre-defined constraints” of this active
object without user selection, such as the ticker symbol is limited to three, four,
or five letters, characters that are automatically capitalized, and the individual
stock quote is placed to the right of the symbol. See Risberg 8:19–26, 9:48–52;
Fig. 1. Similarly, other active objects are pre-constrained, such as the graph
active object has the x and y axes oriented in a particular manner. We therefore
disagree with Patent Owner that Risberg does not disclose the recitation, “pre-
defined constraints providing a generally uniform look and feel with other
interface screens of said plurality of computers.” App. Br. 6–9.
Claim 3 is separately argued. App. Br. 27. Patent Owner asserts
Risberg’s screen elements do not provide for variation in screen characteristics
in conformity with pre-defined constraints because the user has full control.
App. Br. 27. We disagree for the above-discussed reasons. That is, Risberg’s
screen elements (e.g., quote object with various components) provides for
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screen characteristic variations that conform with pre-defined constraints. For
example, the quote object provides for variations in ticker symbol and quote
value while maintaining conformity with pre-defined constraints (e.g.,
capitalizing the ticker symbol and having the ticker symbol on the left and the
value on the right).
For claims 13–40, 61–65, 68–82, 85, and 86, Patent Owner incorporates
the arguments presented for claim 1. App. Br. 18–19. Patent Owner does not
discuss claims 41–46. App. Br. 11–19. We remain unpersuaded the Examiner
erred for the above-stated reasons.
For the foregoing reasons, Patent Owner has not persuaded us of error in the
rejection of claims 1, 3, 13–40, 61–65, 68–82, 85, and 86 and (2) claims 2–12 and
41–60 not separately argued.
B. Anticipation Rejection Based on Diaz
At the outset, Patent Owner asserts that the Examiner has cited to disparate
portions of Diaz in formulating an anticipation rejection and Diaz fails to disclose
“all the elements of the claims ‘as arranged in the claims.’” App. Br. 19–20; Reb.
Br. 10–11. Patent Owner specifically asserts that there is no link or relationship
between the various cited pages of Diaz, such as page 9’s discussion of displaying
newspapers on a screen and page 37’s discussion of Figure 10D that addresses
customizing a display. App. Br. 20. On the other hand, Patent Owner argues that
showing a relationship or link between parts of a reference “misses the mark” to
show “the reference teaches the claim elements ‘as arranged in the claim.’” Reb.
Br. 11.
Patent Owner leaves us to speculate which specific elements of which claims
are not disclosed by the purportedly widely disparate passages of Diaz (e.g., pages
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4–5, 7, 9, 20, 34, and 37). App. Br. 19–20; Reb. Br. 10–11. Even so, in effort to
respond to Patent Owner’s specific discussion of pages 9 and 37 in Diaz
concerning customizing a display, the Examiner explains that page 9 of Diaz
discusses the overall system for publishing information and how data is transmitted
from different newspaper publications to subscribers who can customize how the
paper is to be displayed. Ans. 16–17. The Examiner additionally explains that the
discussion on page 37 “directly relates to the teachings set forth on page 9,”
because Figure 10D shows an embodiment of customized specific sections of the
screen. Ans. 17; Diaz 37:9–17. We agree and find the Examiner’s position
reasonable. Additionally, Figure 10D includes a “CUSTOMIZE” screen; this
screen is shown and describe in more detail. See Diaz 38:18–33, Fig. 10J.
Next, Patent Owner argues that Diaz fails to disclose the recitation,
“enabling selection of a customized assortment of information content from
information content from said plurality of information providers.” App.
Br. 20–21; Reb. Br. 11. Specifically, Patent Owner asserts that selecting a section
button does not display simultaneously multiple newspapers to which the user has
subscribed, but rather only sections associated with one newspaper. Id. In a
nutshell, Patent Owner argues Diaz does not disclose enabling selection of
information content from information providers. Id. We are not persuaded.
First, the ’418 patent states that “information sources” are referred to as
“information providers” (the ’418 patent 3:41–42) but does not limit the
information sources to be separate newspapers. Diaz further explains that the
content is produced and sent from various information sources (e.g., Local News
Distributors, Regional Newsrooms, and National Newsrooms) and various
newspapers, magazines, and electronic databases. Diaz 15:13–16, 24–34, 19:4–7;
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Fig. 2. Thus, the information content even in a single selected newspaper comes
from multiple information sources (e.g., information providers). Diaz also
discusses permitting the user to view “those newspapers to which the user has
subscribed” and that “only selected newspapers are stored in the memory[.]”
Ans. 19 (citing Diaz 5:3–4); Diaz 5:5–6. By allowing the user to subscribe to
select newspapers, Diaz enables a user to select a customized assortment of
information content (e.g., information corresponding to the subscribed newspapers)
from information providers’ content (e.g., all possible subscription newspapers’ or
the subscribed newspapers’ content).
Second, as broadly as recited, claim 1 does not require displaying multiple
newspapers at once or moving between newspapers. Ans. 19; Reb. Br. 11. The
Examiner explains:
Claim 1 requires that the selection of a customized assortment of
information content from information content from said plurality of
information providers be enabled. Diaz discloses selecting newspapers from
a number of newspapers and then pressing the "section button" to display
various sections of one of the selected newspapers as discussed above. The
teachings of Diaz are considered to be enabling selection (i.e., selecting
newspapers and/or pressing the "section" button) of a customized assortment
of information content (e.g., content in newspaper 620a to 620g, where the
newspaper is one of the selected newspapers that a user subscribes to) from
information content from said plurality of information providers (i.e., the
selected newspapers stored in memory).

Ans. 18.
Patent Owner further contends that Diaz fails to disclose “enabling selection
of at least one interface screen element from a plurality of pre-defined interface
screen elements for inclusion in said customized interface screens.” In particular,
Patent Owner disputes that the one sentence of Diaz, indicating that the user can
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customize a display by selecting sections to display on page 9 is insufficient to
disclose the above limitation, because Diaz fails to mention “a plurality of pre-
defined interface screen elements.” App. Br. 21–22; Reb. Br. 11–12. Patent
Owner also argues that page 37 in Diaz does not teach customizing an interface
screen as mentioned on page 9. App. Br. 22.
Diaz teaches that a user can customize a display by selecting sections of a
newspaper to display (e.g., the front section and the sports sections of a
newspaper). Diaz 9:30–34. Figure 10D shows an example of a screen display
when the “sections” button is pressed, displaying various selected sections (e.g.,
sports, weather, business, classified, clippings) that have been customized.
Ans. 20; Diaz 37:3–15. The Examiner and the Request additionally refers to other
Figures (e.g., Figs. 10E-J) that have been further customized. Ans. 20 (citing page
37 of Diaz); Request 12. For example, Diaz discusses Figure 10H as a customized
classified section to show houses within a particular price range and geographic
location, cars within a particular price range, and jobs of a certain category. Diaz
38:1-11; Fig. 10H. Figure 10J also shows the customization screen presented
using the “CUSTOMIZE” button shown in Figure 10D where the user is allowed
to select desired areas of interest. Diaz 38:18–33.
Patent Owner also argues that Diaz fails to disclose “said screen elements
having on-screen characteristics subject to pre-defined constraints providing a
generally uniform look and feel with other interface screens of said plurality of
computers.” App. Br. 22–23. Patent Owner argues that the rejection fails to state
what are the “on-screen characteristics subject to pre-defined constraints” that
establish a look and feel “with other interface screens” as recited in claim 1 and is
“completely silent on these issues. App. Br. 23; Reb. Br. 12. We disagree.
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Patent Owner’s quoted portion of the Request (App. Br. 22–23 (quoting
Request 13 (citing Diaz 34:23–24)) describes how the display has similarities to
the front page of newspaper. We acknowledge that this passage fails to use the
phrase, “on-screen characteristics subject to pre-defined constraints” but to obtain
similarities to the front page of a newspaper, the screen displays information must
have similarities to a newspaper. See Ans. 21 (citing Fig. 10B and discussing Diaz
34:23–24). Thus, in order to obtain these similarities, the screen must have
characteristics that are subject to a conventional newspaper’s look or includes
constraints defined by conventional newspaper’s front page, such as a heading
being located on the top of the page, the date on the top of the page, and snippets
of various articles to follow below with bold articles titles and writer’s names
located beneath the each title. See Diaz, Fig. 10B; see also Ans. 21–22. The
Examiner further notes that each screen has control section 1012 which also adds
to the general uniform look and feel of each interface screen and includes
predefined selection buttons (e.g., undo, back, front page, sections, next) with
similar font. See Ans. 21–22 and Diaz, Figs. 10B-J. The Examiner therefore has
addressed how Diaz discloses the on-screen characteristics are subject to
pre-defined constraints that establishes a generally uniform look and feel with
other interface screens and also other user devices for subscribing to different
newspapers. See Ans. 21–22.
Patent Owner further argues Diaz fails to disclose “associating a selection of
a customized assortment of information content for a first computer of said
plurality and a selection of at least one screen element for said first computer for
display on said first computer in said one or more customized interface screens” as
recited in claim 1. Here, Patent Owner contends Diaz does not permit two
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selections as recited in claim 1 (i.e., the two “enabling selection” steps in claim 1)
and thus cannot make an association between the two selections. App. Br. 24. We
disagree Diaz does not disclose the two “enabling selection” steps as explained
above and disagree that there cannot be an association in Diaz of two selections, as
Patent Owner contends. See also Ans. 22–23.
Finally, Patent Owner contends Diaz is not enabling for the discussed
customization features and asserts that In re Antor Media Corp., 689 F.3d 1282
(Fed. Cir. 2012) is “bad law.” See App. Br. 24–25. Notably, the concept that prior
art publications are presumptively enabling barring any evidence to the contrary
remains the current law. See Antor Media, 689 F.3d at 1288; see also In re Finjan,
Inc., 491 Fed.App’x. 194(Fed. Cir. 2013) (per curiam), cert denied, 134 S.Ct. 64
(2013). Also, although Patent Owner made a cursory challenge that Diaz is
nonenabling for its customizing features, Patent Owner has provided minimal and
insufficient evidence to demonstrate this contention, as the Examiner indicates.
See Ans. 24. To counter Patent Owner’s assertion, we find that Diaz’ disclosure
teaches an ordinarily skilled artisan how to make and use its customization features
without undue experimentation as explained above when addressing Diaz and the
claimed “customized assortment” and “customized interface screens” features of
claim 1.
Claim 3 is separately argued. App. Br. 28. Patent Owner asserts Diaz fails
disclose its recitation because Diaz selects sections of a newspaper and screen
elements are not pre-constrained. Id. For the above reasons, we disagree. See
also Ans. 28 (referring to previous discussed Fig. 10H of Diaz).
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For the foregoing reasons, Patent Owner has not persuaded us of error in the
rejection of claims 1 and 3 and claims 2, 7–9, 48–52 and 54–56 not separately
argued.
For claims 13–15, 17, 18, 24–26, 28, 30–32, 36–38, 40, 41, 63–73, and 75–
86, Patent Owner incorporates the arguments presented for claim 1. App. Br. 25.
We remain unpersuaded for the above-stated reasons.
According, Patent Owner has not persuaded us of error in the rejection of
claims 1–3, 7–9, 13–15, 17–18, 24–26, 28, 30–32, 36–38, 40, 41, 48–52, 54–56,
63–73, and 75–86.
C. Obviousness Rejection Based on Diaz and Risberg
Claims 4–6, 10, 11, 20, 21, 33, 34, 43, 44, 57, and 58 are rejected under
§ 103 as obvious based on Diaz and Risberg. These claims are argued collectively,
and we select claim 4 as representative.
Patent Owner argues that Diaz is non-analogous art. App. Br. 26. As stated
in In re Kahn, 441 F.3d 977 (Fed. Cir. 2006), “[t]he analogous-art test requires that
the Board show that a reference is either in the field of the applicant's endeavor or
is reasonably pertinent to the problem with which the inventor was concerned in
order to rely on that reference as a basis for rejection.” Id. at 986-87 (citing
Oetiker, 977 F.2d at 1447). The ’418 patent states the invention “relates generally
to electronic information delivery systems” and distributed system with multiple
sites “for presenting myriad amounts of information to users.” The ’418 patent
1:12–15. Similarly, Diaz deals with delivering lots of information related to
publications electronically to subscribers. Diaz, Abstract and 5:1–8, 15:22–34;
Fig. 10B. We therefore find that Diaz is within Patent Owner’s field of endeavor
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of an electronic information delivery system that presents myriads of information
to a user.
Patent Owner further contends combining Risberg with Diaz would require
substantial redesigning. App. Br. 26–27. In particular, Patent Owner argues that
Diaz operates with static data and Risberg modifies active or real-time data. App.
Br. 27. As such, Patent Owner argues that Diaz would require substantial
reconstruction to operate in a real-time data environment. We disagree.
First, as the Examiner indicates, the claims do not limit any data to “real-
time data.” Ans. 27. Second, the obviousness rejection cites to Diaz for many of
the claim elements, including the recited information content. See Ans. 4 (citing
Request 10–15, which addresses this claim limitation in claim 1 and is part of
claim 4 due to its dependency on claim 1). Third, the proposed rejection relies on
Risberg for the feature of providing variation or customization to the on-screen
characteristics. See Ans. 27; see also Ans. 4 (citing Request 71). Accordingly, as
proposed, Diaz would not need to be modified to operate with real-time data, and
the purported substantial reconstruction that Patent Owner is arguing is not
necessary.
Next, Patent Owner asserts that the Federal Circuit “frown[s] upon” the
Examiner adopting the Requester’s findings “without modification.” App. Br. 28.
The Examiner notes that MPEP §§ 2660(II) and (V) permit such a practice. Ans.
28–29; see also MPEP §2660(III). Although Patent Owner attempts to draw
parallels to TriMed, Inc. v. Stryker Corp., 608 F.3d 1333 (Fed. Cir. 2010) in
making this assertion, we do not find the statements concerning a district court’s
actions in TriMed are applicable to these proceedings. App. Br. 28. Also, as
discussed above and as can be seen in the RAN and the Examiner’s Answer, the
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Examiner has added his own findings and conclusions related to the cited prior art
separate from those of the Requester. See RAN 6–18 and Ans. 5–29.
We further disagree that the proposed obviousness rejection fails to provide
a prima facie case of obviousness. App. Br. 29–30. “[A]ll that is required of the
office to meet its prima facie burden of production is to set forth the statutory basis
of the rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of § 132.” In
re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Concerning representative claim 4,
we find that the Examiner has met this burden sufficiently. That is, the adopted
rejection articulates that Risberg is being relied upon to teach the recitation related
to variable on-screen characteristics that include at least one of the recited features
and then further explains why an ordinarily skilled artisan would combine this
teaching with Diaz. See Request 70–71; see also Ans. 29.
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness for claims. Accordingly, Patent Owner has not
persuaded us of error in the rejection of claims 4–6, 10, 11, 20, 21, 33, 34, 43, 44,
57, and 58.

IV. CONCLUSION
The Examiner’s decision to reject claims 1–86 is affirmed.

V. TIME PERIOD FOR RESPONSE
Requests for extensions of time in this proceeding are governed by 37 C.F.R.
§§ 1.956 and 41.79(e). In the event neither party files a request for rehearing
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20
within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely
serve notice on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

ack

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