In Re: Lorkovic ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: JOSEPH ERNEST LORKOVIC,
Appellant
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2017-1678
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 11/384,662.
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Decided: November 13, 2017
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JOSEPH ERNEST LORKOVIC, San Diego, CA, pro se.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Joseph Matal. Also represented by BENJAMIN T.
HICKMAN, THOMAS W. KRAUSE, JOSEPH GERARD PICCOLO.
______________________
Before LOURIE, REYNA, and TARANTO, Circuit Judges.
LOURIE, Circuit Judge.
Joseph Ernest Lorkovic appeals from a decision of the
United States Patent and Trademark Office (“PTO”)
Patent Trial and Appeal Board (“Board”) affirming the
Examiner’s rejection of claims 62–64, 67–69, 71–73, 75,
and 77–86 of U.S. Patent Application 11/384,662 (“the
2 IN RE: LORKOVIC
’662 application”) as unpatentable under 35 U.S.C.
§ 103(a) (2006). 1 See Ex parte Lorkovic, No. 2015-004341,
2016 WL 6136754, at *1, *6 (P.T.A.B. Oct. 19, 2016)
(“Board Decision”); Joint App. (“J.A.”) 8–20. Because the
Board did not err in its decision, we affirm.
BACKGROUND
Lorkovic filed the ’662 application on March 20, 2006,
claiming priority from a provisional application filed on
March 22, 2005. J.A. 117. The ’662 application, which is
entitled “Dual Display Interactive Video,” is directed to a
home entertainment content delivery system “for interac-
tive content dissemination over the internet.” See ’662
application Abstract. Claim 62, the only independent
claim, reads as follows:
62. A system for displaying video content and as-
sociated web content, comprising:
a processor operable to:
cause video content to display in an area
of a first display of a first remote device;
receive a first set of position coordinates
associated with a user selection within the
first area of the first display during dis-
play of the video content on the first dis-
play;
identify web content based on the first set
of position coordinates; and
cause the web content to display on a sec-
ond display of a second remote device,
1 Because the ’662 application was filed before the
enactment of the Leahy-Smith America Invents Act
(“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), we apply
the pre-AIA version of 35 U.S.C § 103.
IN RE: LORKOVIC 3
wherein the first device and the second
device are remote from each other, and
wherein the processor does not reside at
the first remote device and the second re-
mote device.
J.A. 89.
The Examiner rejected all pending claims of the ’662
application as obvious under 35 U.S.C. § 103(a). Claims
62–64, 67–69, 71–73, and 77–85 were rejected as obvious
over U.S. Patent 5,918,012 to Astiz et al. (“Astiz”) in view
of U.S. Publication 2005/0229233 to Zimmerman et al.
(“Zimmerman”). 2 J.A. 102. Both Astiz and Zimmerman
are directed to providing complementary information or
content based on a user interaction with a video. Astiz
discloses a system that displays video content from the
internet based on the user interaction. See Astiz col. 4 ll.
48–59, col. 10 ll. 53–65. Zimmerman discloses a method
where the complementary information may be sent to “a
secondary screen, such as a personal digital assistant, a
touch-screen remote control, a web pad, a mobile phone,
or the like.” See Zimmerman ¶ 57. The Examiner found
that it would have been obvious to one skilled in the art to
combine the internet enabled system in Astiz with the
secondary screen taught by Zimmerman to achieve the
claimed subject matter.
Lorkovic appealed to the Board, which affirmed the
Examiner’s obviousness rejections. In his appeal,
Lorkovic argued that Astiz and Zimmerman were not
combinable because integrating Zimmerman with Astiz
would require altering how Astiz functions and thus
teaches away from doing so. The Board was not persuad-
2 Claims 75 and 86 were rejected as obvious over a
different combination of prior art references, which are
not at issue in this appeal.
4 IN RE: LORKOVIC
ed by Lorkovic’s contentions, which it found were prem-
ised on “‘physical’ or ‘bodily’ incorporation of limitations of
one reference into the other.” Board Decision, 2016 WL
6136754, at *2. The Board held that the teachings were
properly combinable, even if the physical objects were not,
and that the claimed subject matter would have been
obvious to one of ordinary skill in the art. Id.Lorkovic filed a request for rehearing by the Board,
which the Board denied. Ex parte Lorkovic, No. 2015-
004341, 2016 WL 7474870, at *4 (P.T.A.B. Dec. 20, 2016)
(“Rehearing Decision”). Lorkovic argued that the Board
had failed to require that (1) the Examiner establish a
prima facie case of obviousness and (2) Astiz and Zim-
merman were not compatible systems and could not be
combined to result in the present invention.
The Board found that Lorkovic waived the prima facie
case argument by not raising it in his prior briefing. Id.at *1–2. The Board also explained that even if the argu-
ment had not been waived, the Examiner had satisfied his
initial burden of presenting a prima facie case of obvious-
ness. Id. at *2 (finding that the Examiner had properly
articulated how the combination of Astiz and Zimmerman
rendered the claimed subject matter obvious). The Board
reconsidered its earlier decision and still concluded that
the claimed subject matter would have been obvious to
one of ordinary skill in the art over Astiz and Zimmer-
man. Id. at *3–4.
Lorkovic timely appealed to this court. We have ju-
risdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal determinations de novo,
In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings underlying those determinations
for substantial evidence, In re Gartside, 203 F.3d 1305,
1316 (Fed. Cir. 2000). A finding is supported by substan-
IN RE: LORKOVIC 5
tial evidence if a reasonable mind might accept the evi-
dence to support the finding. Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938). Obviousness is a ques-
tion of law based on underlying factual findings, In re
Baxter, 678 F.3d 1357, 1361 (Fed. Cir. 2012), including
what a reference teaches, In re Beattie, 974 F.2d 1309,
1311 (Fed. Cir. 1992), the existence of a reason to combine
references, In re Hyon, 679 F.3d 1363, 1365–66 (Fed. Cir.
2012), and whether the prior art teaches away from the
claimed invention, In re Mouttet, 686 F.3d 1322, 1330
(Fed. Cir. 2012).
We first consider whether the Board erred in affirm-
ing the Examiner’s obviousness rejections. As an initial
matter, the Director of the Patent and Trademark Office
(“the Director”) argues that Lorkovic erroneously chal-
lenges the findings in the Examiner’s final office action
rather than the Board’s final decision.
We agree with the Director that we must review the
final Board decision, not the Examiner’s final rejection.
See 28 U.S.C. § 1295(a)(4)(A). To the extent, however,
that the Board adopted the Examiner’s findings, we will
review Lorkovic’s challenges to what is in the Board’s
opinion.
Lorkovic argues that Astiz and Zimmerman are not
combinable and would not render the claimed subject
matter obvious. According to Lorkovic, the web browsing
functionality in Astiz is not compatible with the analog
based Zimmerman device. As a result, Lorkovic contends
that the software and hardware engineering necessary to
enable the present invention is nonexistent in the prior
art references.
The Director responds that substantial evidence sup-
ports the Board’s factual findings that Zimmerman teach-
es using a second device, and that Astiz’s server could be
modified to accommodate this second device.
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We agree with the Director that substantial evidence
supports the Board’s determination that one of ordinary
skill in the art would have combined Astiz and Zimmer-
man to render the claimed subject matter obvious. We
have previously observed that “applying computer and
internet technology to replace older electronics has been
commonplace in recent years” and found obviousness in
reliance on that observation. See W. Union Co. v.
MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1370 (Fed.
Cir. 2010) (citations omitted).
The Board here found that Astiz teaches a processor
that can receive user input and display video content from
the internet. Board Decision, 2016 WL 6136754, at *2
(citing Astiz col. 4 ll. 54–59, col. 10 ll. 53–65). The Board
also found that Zimmerman teaches a processor operable
to cause web content to be displayed on a display of a
second remote device. Id. (citing Zimmerman ¶ 57). The
Board determined that one of ordinary skill in the art
could “modify[] the . . . server of Astiz to transmit the web
content to a second remote device, as taught by Zimmer-
man” rendering the claimed invention obvious. Id. at *3.
These findings constitute substantial evidence. We
therefore conclude that substantial evidence supports the
Board’s determination that a person of ordinary skill in
the art would have found the claimed subject matter
obvious over the combination of Astiz and Zimmerman.
Lorkovic puts forth additional nonobviousness argu-
ments with respect to claims 62–64, 67–69, 71–73, 75, and
77–85, which are different from those he presented to the
Board. Lorkovic does not separately argue claim 86. The
Director responds that Lorkovic has not properly devel-
oped his arguments on appeal, and thus has not carried
his burden of demonstrating reversible error.
We agree with the Director that we should not reach
Lorkovic’s additional arguments with respect to these
claims. Lorkovic does not challenge claim 86 on appeal,
IN RE: LORKOVIC 7
and thus it is waived. See SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006)
(“[A]rguments not raised in the opening brief are
waived.”). Lorkovic’s additional arguments with respect
to claims 62–64, 67–69, 71–73, 75, and 77–85 differ from
those he raised before the Board, and we thus decline to
consider those arguments raised for the first time on
appeal. See In re Watts, 354 F.3d 1362, 1367–68 (Fed.
Cir. 2004); see also Sage Prods., Inc. v. Devon Indus., Inc.,
126 F.3d 1420, 1426 (Fed. Cir. 1997) (“With a few notable
exceptions, . . . appellate courts do not consider a party’s
new theories, lodged first on appeal.”). We therefore
affirm the Board’s decision that the Examiner did not err
in rejecting claims 62–64, 67–69, 71–73, 75, and 77–86.
Lorkovic argues that the Board set forth a new
ground of rejection in its Rehearing Decision by “framing
the Astiz patent disclosure as having a secondary dis-
play.” Appellant Br. 11. In effect, he asserts that he has
thereby been denied due process. The Director responds
that the Board has maintained the same obviousness
rationale throughout the entire proceeding and that we
should therefore reject Lorkovic’s argument.
We have held that the Board violates an individual’s
administrative right to due process if it raises a new
ground of rejection without giving notice and an oppor-
tunity to respond. See In re Stepan Co., 660 F.3d 1341,
1344–46 (Fed. Cir. 2011); see also 37 C.F.R. § 41.50(b).
“Whether the Board relied on a new ground of rejection is
a legal question that we review de novo.” In re Stepan,
660 F.3d at 1343 (italics added and citation omitted).
We agree with the Director that the Board did not re-
ly on a new ground of rejection in its Rehearing Decision.
The Board agreed with the Examiner that Astiz discloses
causing the web content to be displayed on a second
display and reaffirmed this finding in its Rehearing
Decision. Compare Board Decision, 2016 WL 6136754, at
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*2 with Rehearing Decision, 2016 WL 7474870, at *3.
There was no new ground of rejection. We therefore
conclude that this argument lacks merit.
We have considered Lorkovic’s remaining arguments
but find them unpersuasive or waived.
CONCLUSION
For the foregoing reasons, we conclude that the Board
did not err in affirming the Examiner’s rejections of
claims 62–64, 67–69, 71–73, 75, and 77–86 of the ’662
application.
AFFIRMED