N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

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IN RE: JOSEPH ERNES T LORKOVIC, Appellant

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2017

- 1678

______________________ 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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J OSEPH E RNEST L ORKOVIC , San Diego, CA, pro se.

N ATHAN K. K ELLEY , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for appellee Joseph Matal. Also represented by B ENJAMIN T. H ICKMAN , T HOMAS W. K RAUSE , J OSEPH G ERARD P ICC OLO

.

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Before L OURIE , R EYNA , and T ARANTO , Circuit Judges.

L OURIE , Circuit Judge.
Joseph Ernest Lorkovic a ppeals 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 ( “ theIN RE : LORKOVIC 2

’662 application”) as unpatentable under 35 U.S.C. § 10 3(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

. B ACKGROUND
Lorkovic filed the ’662 applicati on 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 intera ctive 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 a ssociated web content, comprising:

a processor operable to:
cause video content to display in an area of a first display of a first remote de vice ; receive a first set of position coordinates associated with a user selection within the first area of the first display during di splay of the video content on the first di splay;

iden tify web content based on the first set of position coordinates ; and

cause the web content to display on a se cond display of a second remote de vice

,

1 Because the ’662 application was filed before the

en actment 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 de vice are remote from each other , and wherein the processor does n ot reside at the first remote device and the second r emote 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 2005/0229 233 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 v ideo

. 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 d iscloses 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 thu s teaches a way from doing so

. The Board was not persua d-

2 Claims 75 and 86 were rejected as obvious over a di f fer ent combination of prior art references , which are not at issue in this appeal.IN RE : LORKOVIC 4

ed by Lorkovic’s contentions, which it found were pre mised 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 p arte Lorkovic , No. 2015

- 004341, 2016 WL 7474870, at *4 (P.T.A.B. Dec. 20, 2016) (“ Rehearing Decision ”). Lorkovic ar gued that the Board had failed to require that (1) the Examiner establish a prima facie case of obviousness and (2) Astiz and Zi mmerman were not compatible systems and could not be combine d to result in the present invention

. T he Board found that Lorkovic waived the prima facie

case argument by not raising it in his prior brief ing

. Id. at * 1–2 . T he Board also explained that even if the arg ument had not been waived, the Examiner had satisfied his initial burden of presenting a prima facie case of obviou sness. Id. at *2 (fi nding that the Examiner had proper ly 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 Zimme rman

. Id. at *3 –4.

Lorkovic timely appealed to this court. We have j urisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

D ISCUSSION
We review the Boa rd’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 substan tial evidence, In re Gartside , 203 F.3d 1305, 1316 (Fed. Cir. 2000)

. A finding is supported by substa n-IN RE : LORKOVIC 5

tial evidence if a reasonable mind might accept the ev idence to support the finding. Consol. Edison Co. v. NLRB , 305 U.S. 197, 229 (1938). Obviousness is a que stion 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 affir ming the Examiner’s obviousn ess rejections. As an initial matter, the Di rector of the Patent and Trademark Office (“ the D irector”) argues that Lorkovic erroneously cha llenge s 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 t he 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 Z immerman 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 resu lt, Lorkovic contends that the software and hardware engineering necessary to enable the present inve ntion is nonexistent in the prior art references.
The Director responds that substantial evidence su pports the Board’s factual f indings that Zimmerman teac hes using a second device, and that Astiz’s server could be modified to a ccommodate this second device.IN RE : LORKOVIC 6

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 Zimme rman to render the cla imed 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. MoneyGr am Payment Sys., Inc. , 626 F.3d 1361, 1370 (Fed. Cir. 2010) (citations omit ted).

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 As tiz 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 display ed on a display of a second remote device. Id. ( citing Zimmerman ¶ 57 ) . T he 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 Zimme rman” ren dering 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 put s forth additional nonobvious ness arg uments 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. T he Director responds that Lorkovic has not properly deve loped his arguments on appeal, and thus has not carried his burden of demonstrating reversible erro r. 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 th e Examiner did not err in rejec ting cla ims 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 di splay.” 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 t he Board violates an individual’s administr ative right to due process if it raises a new ground of rejection without giving notice and an oppo rtunity 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 cita tion omitted).
We agree with the Director that the Board did not r ely 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 display ed on a second display and reaffirmed this finding in its Rehearing D ecision

. Compare Board Decision , 2016 WL 6136754, atIN RE : LORKOVIC 8

*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

. C ONCLUSION 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