NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: JOSEPH ERNEST LORKOVIC,

Appellant

______________________ 

2017-1678

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 11/384,662.

______________________ 

Decided: November 13, 2017

______________________ 

 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 interactive 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 associated 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 display of the video content on the first display;

identify web content based on the first set 

of position coordinates; and

cause the web content to display on a second 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 remote 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 premised 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 Zimmerman 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 argument had not been waived, the Examiner had satisfied his 

initial burden of presenting a prima facie case of obviousness. 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 Zimmerman. Id. at *3–4. 

Lorkovic timely appealed to this court. We have jurisdiction 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 evidence to support the finding. Consol. Edison Co. v. 

NLRB, 305 U.S. 197, 229 (1938). Obviousness is a question 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 affirming the Examiner’s obviousness rejections. As an initial 

matter, the Director of the Patent and Trademark Office 

(“the Director”) argues that Lorkovic erroneously challenges 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 supports the Board’s factual findings that Zimmerman teaches using a second device, and that Astiz’s server could be 

modified to accommodate this second device.
6 IN RE: LORKOVIC

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 Zimmerman 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 Zimmerman” 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 arguments 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 developed 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 display.” 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 opportunity 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 rely 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 
8 IN RE: LORKOVIC

*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