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23-1913•Xerox Corp. v. Xcorp.
N OTE : This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
XEROX CORP.,
Appellant
v.
X CORP.,
Appellee
______________________
2023-1913
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
01398.
______________________
Decided: June 17, 2025
______________________
KYLE N. R YMAN, McKool Smith, P.C., Austin, TX, ar-
gued for appellant. Also represented by J AMES E LROY
QUIGLEY; KEVIN L. BURGESS, Marshall, TX; A LEXANDRA
F IGARI EASLEY, DAVID SOCHIA , Dallas, TX.
DEBRA J ANECE MCC OMAS, Haynes and Boone, LLP,
Dallas, TX, argued for appellee. Also represented by DAVID
L. MC COMBS; A DAM L LOYD ERICKSON, A NGELA M. OLIVER ,
Washington, DC.
______________________
Case: 23-1913 Document: 47 Page: 1 Filed: 06/17/2025
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XEROX CORP . v. X CORP . 2
Before STOLL, C LEVENGER , and C UNNINGHAM , Circuit
Judges.
STOLL, Circuit Judge.
Xerox Corp. (“Xerox”) appeals the final written decision
of the Patent Trial and Appeal Board holding claims 1–18
of U.S. Patent No. 7,043,475 unpatentable under 35 U.S.C.
§ 103. On appeal, Xerox challenges the Board’s construc-
tion of the claim term “determining proximal information,”
the Board’s findings related to motivation to combine and
reasonable expectation of success, and the Board’s analysis
of Xerox’s alleged objective evidence of nonobviousness.
For the following reasons, we affirm.
B ACKGROUND
I
The ’475 patent is titled “Systems and Methods for
Clustering User Sessions Using Multi-Modal Information
Including Proximal Cue Information” and “relates to sys-
tems and methods for navigating through and searching
for sites on a distributed network.” U.S. Patent
No. 7,043,475 Title, col. 1 ll. 17–19. At a high level, the in-
vention relates to “creating user profiles for users who visit
web pages and classifying such users.” J.A. 3.
In various exemplary embodiments, (1) a plurality of
user paths are selected in a collection of content portions
(e.g., web pages containing links); (2) for each path, the
multi-modal information for content portions associated
with the user path is determined; (3) the proximal infor-
mation for content portions associated with the user path
is determined; (4) the multi-modal information for content
portions and the proximal information for content portions
associated with the user path are combined to form a user
profile; and (5) the multi-modal information and proximal
information of user profiles are clustered based on similar-
ity. ’475 patent col. 1 l. 61–col. 2 l. 6. Step 3 is relevant on
appeal.
Case: 23-1913 Document: 47 Page: 2 Filed: 06/17/2025
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XEROX CORP . v. X CORP . 3
The specification discloses that weighted vectors can be
used to represent multi-modal information and proximal
information. ’475 patent col. 2 ll. 16–21. The “proximal
cue feature vector,” the “content feature vector,” the “URL
feature vector,” the “inlink feature vector,” the “outlink fea-
ture vector,”1 and the “information need feature vector” for
each document or web page on the user path are combined,
and the combined “multi-modal vector” represents a user
profile. ’475 patent col. 6 ll. 4–11.
The Board explained that independent claim 10 is il-
lustrative and thus focused its analysis on that claim’s lim-
itations. Claim 10 recites the following:
10. A computer system to cluster user sessions us-
ing multi-modal information and proximal infor-
mation, comprising:
[10.1] a user path determining circuit that selects
a plurality of user paths in a collection of content
portions;
[10.2] a multi-modal information determining cir-
cuit that determines multi-modal information for
content portions associated with the user path;
[10.3] a proximal information determining circuit
that determines proximal information for content
portions associated with the user path;
[10.4] a similarity determining circuit that com-
bines the multimodal information for content por-
tions and the proximal information for content
1 “[A] link that sends the user to another content por-
tion [e.g., web page] is defined as an ‘outlink’ and a link
that brings the user to the content portion [e.g., web page]
is defined as an ‘inlink.’” ’475 patent col. 3 ll. 36–39.
Case: 23-1913 Document: 47 Page: 3 Filed: 06/17/2025
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XEROX CORP . v. X CORP . 4
portions associated with the user path to form a
user profile having a unified representation; and
[10.5] a cluster and similarity measure determin-
ing circuit that clusters multi-modal information
and proximal information of user profiles based on
similarity.
’475 patent col. 16 ll. 5–23 (emphasis added). Limita-
tion 10.3, which involves “determin[ing] proximal infor-
mation,” is relevant on appeal.
II
The Board’s decision involves five prior art references,
though not all five are relevant on appeal. We thus de-
scribe only the two prior art references necessary to ad-
dress Xerox’s challenges.
Chen2
Chen discloses “[a] system and method for browsing,
retrieving, and recommending information from a collec-
tion [that] uses multi-modal features of the documents in
the collection, as well as an analysis of users’ prior brows-
ing and retrieval behavior.” J.A. 1584. “Multi-modal fea-
tures may take on many forms, such as user information,
text genre, or analysis of images.” J.A. 1587 ¶ 27. Chen’s
disclosure involves (1) “methods for quantitatively repre-
senting documents in a document collection as vectors in
multi-dimensional vector spaces, quantitatively determin-
ing similarity between documents, and clustering docu-
ments according to those similarities”; and (2) “methods for
quantitatively representing users in a user population,
quantitatively determining similarity between users, clus-
tering users according to those similarities, and visually
2 European Patent App. No. 1 024 437 A2.
Case: 23-1913 Document: 47 Page: 4 Filed: 06/17/2025
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XEROX CORP . v. X CORP . 5
representing clusters of users by analogy to clusters of doc-
uments.” J.A. 1584.
“[E]ach document (for example, an HTML document [])
chosen from a collection [] maps to a set of feature vec-
tors [], one for each modality (for example, a text vector []
and a URL vector []).” J.A. 1589 ¶ 37. Chen discloses nu-
merous possible document features: “text content, docu-
ment link, inlinks, outlinks, text genre, image color
histogram, and image complexity. The first two of the
listed features are text based, inlinks and outlinks are hy-
perlink based, text genre is probability based, and the final
two features (image color histogram and image complexity)
are image-based.” J.A. 1589 ¶ 41.
Chen explains that “[a]fter the contents of a new docu-
ment (which can be a text document, image, or other type
of information) are isolated [], the disclosed method uses
various information sources to derive the feature vectors.”
J.A. 1589 ¶ 42. “Text is extracted from the document [] and
used to create a corresponding text vector [] and a corre-
sponding URL vector [].” Id. “The text feature is a term
vector, where the elements of the vector represent terms
used in the document itself. . . . [F]or an all-text or HTML
document (or other document type actually containing
text), the text vector is based on the document’s entire text
content.” J.A. 1590 ¶ 51.
Chen discloses that “[a] set of distinct features (possi-
bly from different modalities) is precomputed for each doc-
ument and stored as vectors.” J.A. 1598 ¶ 101. “The text
features include the words of text surrounding and associ-
ated with each image, the URL of the image, . . . [and] hy-
perlink text . . . The documents are clustered into groups
based on each of the features.” Id.
Chen also provides that the following information is
“used in a preferred embodiment of the invention to char-
acterize pages and users: text, URLs, outlinks, inlinks,
and usage logs. The availability of this information
Case: 23-1913 Document: 47 Page: 5 Filed: 06/17/2025
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XEROX CORP . v. X CORP . 6
motivates a multi-modal approach . . . . It is desirable to
be able to exploit and combine information available from
all possible modalities.” J.A. 1602 ¶ 135. “Any type of in-
formation that is available about users is collected.”
J.A. 1608 ¶ 165. Chen discloses that it is “useful to collect
information on the pages users access, as well as the text
content, inlinks, outlinks, and URLs of these pages.” Id.
Chi3
Chi “describe[s] two computational methods for under-
standing the relationship between user needs and user ac-
tions. . . . The algorithms use a concept called ‘information
scent’, which is the subjective sense of value and cost of ac-
cessing a page based on perceptual cues.” J.A. 1649. Chi’s
“underlying assumption . . . is that user behavior in the in-
formation environment is guided by information scent,
which is determined from the perception of the value and
cost of the information with respect to the goal of the user.”
Id.
Chi explains that “[o]n the Web, users typically forage
for information by navigating from page to page along Web
links.” Id. “The content of pages associated with these
links is usually presented to the user by some snippets of
text or graphic. Foragers use these proximal cues (snip-
pets; graphics) to assess the distal content (page at the
other end of the link).” J.A. 1650.
X Corp.’s petition “relies on Chen’s proximal infor-
mation as supplemented by Chi’s proximal information se-
lected from content portions.” J.A. 67.
3 Chi et al., Using Information Scent to Model User
Information Needs and Actions on the Web, 3 SIGCHI’01
(Mar. 31–Apr. 4, 2001).
Case: 23-1913 Document: 47 Page: 6 Filed: 06/17/2025
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XEROX CORP . v. X CORP . 7
III
The Board determined that claims 1–18 of the ’475 pa-
tent are unpatentable. Three aspects of the Board’s deci-
sion are relevant on appeal: (1) the Board’s construction of
“determin[ing] proximal information”; (2) its determina-
tion that Chen as supplemented by Chi teaches “deter-
min[ing] proximal information”; and (3) its analysis of
Xerox’s proffered evidence of unexpected results. See Oral
Arg. at 3:33–4:00 & 22:31–23:35, https://oralargu-
ments.cafc.uscourts.gov/default.aspx?fl=23-1913_1209202
4.mp3. See generally Appellant’s Br.
First, the Board concluded that “‘determining proximal
information for content portions associated with the user
path,’ means ‘finding words in text near or within a link
within content portions associated with the user path.’”
J.A. 23. Second, the Board found that a person of ordinary
skill in the art would have been motivated to modify Chen
in view of Chi’s teaching of using proximal information
with a reasonable expectation of success because “Chi and
Chen have similar goals of recommending information
based on similar techniques” and “Chi suggests using prox-
imal information on the user path of Chen” to “provide bet-
ter recommendations of information to satisfy a user’s
needs.” See, e.g., J.A. 67–71. Third, the Board explained
that “it is not clear what specific ‘unexpected results’
[Xerox] relies upon.” J.A. 80. The Board found that “using
content words (which include words near a link) to obtain
accurate clustering results was not surprising” and,
“[t]herefore, little or no evidence exists to support the con-
clusory allegation of unexpected results.” Id.
Xerox appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A) and 35 U.S.C. § 141(c).
DISCUSSION
“Claim construction is ultimately a question of law, de-
cided de novo on review, as are the intrinsic-evidence
Case: 23-1913 Document: 47 Page: 7 Filed: 06/17/2025
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XEROX CORP . v. X CORP . 8
aspects of a claim-construction analysis.” Intel Corp.
v. Qualcomm Inc., 21 F.4th 801, 808 (Fed. Cir. 2021).
Our court reviews “the Board’s obviousness determina-
tion de novo, but its factual findings for substantial evi-
dence.” Volvo Penta of the Ams., LLC v. Brunswick Corp.,
81 F.4th 1202, 1208 (Fed. Cir. 2023). “The substantial ev-
idence standard asks ‘whether a reasonable fact finder
could have arrived at the agency’s decision,’ and ‘involves
examination of the record as a whole, taking into account
evidence that both justifies and detracts from an agency’s
decision.’” TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352,
1358 (Fed. Cir. 2019) (quoting In re Gartside, 203 F.3d
1305, 1312 (Fed. Cir. 2000)). “Whether a skilled artisan
would have been motivated to combine references or would
have had a reasonable expectation of success in combining
references are questions of fact reviewed for substantial ev-
idence.” Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th
1368, 1374 (Fed. Cir. 2023). The Board’s finding regarding
the strength of objective indicia of nonobviousness, such as
unexpected results, is also a question of fact that we review
for substantial evidence. Elbit Sys. of Am., LLC v. Thales
Visionix, Inc., 881 F.3d 1354, 1356–57 (Fed. Cir. 2018).
I
We begin with the construction of “determining proxi-
mal information.” Xerox challenges the Board’s construc-
tion as overly broad, arguing that: (1) the Board “conflated
proximal information with multi-modal information”;
(2) “[p]roximal information must characterize content”;
and (3) “[p]roximal information requires an association.”
Appellant’s Br. 22, 26, 32 (emphases omitted). For the fol-
lowing reasons, we disagree with Xerox and adopt the
Board’s construction of “determining proximal infor-
mation” as meaning “finding words in text near or within a
link within content portions associated with the user path.”
J.A. 23. In our view, this construction is more consistent
with the patent specification and does not conflate
Case: 23-1913 Document: 47 Page: 8 Filed: 06/17/2025
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XEROX CORP . v. X CORP . 9
proximal information with the broader term multi-modal
information.
We first turn to the claims. The customary meaning of
the terms “proximal” and “information” suggests that
“proximal information” is information that is near or next
to something. Considering the claims as a whole, the
claims recite “using multi-modal information and proximal
information,” determining “multi-modal information,” and
determining “proximal information.” ’475 patent cols. 15–
16. Consistent with our precedent, the claims’ use of dif-
ferent terms would suggest that “multi-modal information”
and “proximal information” should be given different
meanings. Helmsderfer v. Bobrick Washroom Equip., Inc.,
527 F.3d 1379, 1382 (Fed. Cir. 2008).
The specification aids in our understanding of how the
inventors understood the terms multi-modal information
and proximal information. As the specification makes
abundantly clear, proximal information is a subset of
multi-modal information. The ’475 patent specification re-
peatedly discloses that “multi-modal information in-
clud[es] proximal cue information.”4 See, e.g., ’475 patent
Title, Abstract; id. at col. 2 ll. 56–58; id. at col. 4 ll. 48–49.
Indeed, the title of the ’475 patent is “Systems and Meth-
ods for Clustering User Sessions Using Multi-Modal Infor-
mation Including Proximal Cue Information.” ’475 patent
Title (emphasis added).
The remainder of the ’475 patent specification includes
broad examples of “proximal information.” Figure 2 of the
’475 patent (reproduced below) illustrates “a text 202 asso-
ciated with a link 204” where the text 202 “may provide
4 As Xerox explains, the ’475 patent uses “proximal
cue information” and “proximal cues” synonymously with
proximal information. Appellant’s Br. 23 n.3.
Case: 23-1913 Document: 47 Page: 9 Filed: 06/17/2025
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XEROX CORP . v. X CORP . 10
proximal cues as to the nature of the linked information.”
’475 patent col. 3 ll. 43–45.
’475 patent Fig. 2; id. col. 2 ll. 43–44.
The specification’s description of Figure 2 supports the
Board’s interpretation:
Proximal terms represent information cues that
convey information to the simulated user. For ex-
ample, a text 202 associated with a link 204 may
provide proximal cues as to the nature of the linked
information. The proximal cue words may include
portions of the text 202 surrounding the link 204.
So, for example, if the text 202 says “Buy a gift cer-
tificate”, then the words “buy”, “a”, “gift”, and “cer-
tificate” are used as words that describe the
proximal cues. If the link 204, in addition, ha[s]
words 206 near it that say[] “click here to purchase
gift certificates that are discounted”, then these
words 206 are also used to describe the proximal
cues. If the link 204 is in typical Uniform Resource
Locator (URL) form, the punctuation and “/” char-
acters associated with the URL are used to define
Case: 23-1913 Document: 47 Page: 10 Filed: 06/17/2025
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XEROX CORP . v. X CORP . 11
word boundaries. For example, if the link 204 such
as, for example, “http://www.xerox.com/prod-
ucts/support/index.html” is processed, the words
http, www, xerox, com, products, support and index
are considered as proximal cue words for the rele-
vant link 204.
’475 patent col. 3 ll. 41–59. The specification thus indi-
cates that words like “a” and “www” near or in a link are
“proximal information.” Given the breadth of items that
the specification identifies as “proximal information,” we
are persuaded that the Board did not err in construing
“proximal information” as “words in text near or within a
link within content portions associated with the user path”
without the further qualifiers urged by Xerox. J.A. 23.
Other parts of the specification further support this
view, stating that “[t]ext surrounding the link structure,
the title of the proximal page as well as features such as
where the link is found within the document may also be
analyzed for proximal cue words.” ’475 patent col. 8 ll. 34–
37. The specification broadly states that “[a]ny feature of
the proximal document or web page may be used to provide
proximal cue words . . . .” Id. col. 8 ll. 38–40.
Xerox’s proposed construction of “proximal infor-
mation”—as information characterizing the content acces-
sible through the link—would improperly limit the claim
term to certain preferred embodiments while excluding
others. As our precedent recognizes, a claim construction
that omits embodiments in the specification is typically not
the correct one. Oatey Co. v. IPS Corp., 514 F.3d 1271,
1276 (Fed. Cir. 2008). Xerox’s proposal would require prox-
imal information to “describe the contents of a link,” Appel-
lant’s Br. 27, but, as the Board aptly explained, “the word
‘a,’ the letters ‘www’ and ‘com’ are not descriptive of any
content to which the link points.” J.A. 22 (emphasis
added).
Case: 23-1913 Document: 47 Page: 11 Filed: 06/17/2025
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XEROX CORP . v. X CORP . 12
We thus reject Xerox’s proposed construction and adopt
the Board’s construction of determining proximal infor-
mation: “finding words in text near or within a link within
content portions associated with the user path.” J.A. 23.
II
Next, we turn to the Board’s obviousness analysis, and
specifically the Board’s findings related to: (1) “motivation
to combine Chi’s proximal information with Chen,” (2) the
“use of [another reference] Chi4[5] . . . because it’s relevant
also to motivation to combine and also reasonable expecta-
tion of success,” and (3) “secondary evidence of nonobvious-
ness.” Oral Arg. at 22:38–23:22; see Appellant’s Br. 43–64.
At the outset, we note that Xerox failed to raise the use
of Chi4 in its opening brief, so that argument is waived.
See Walker v. Health Int’l Corp., 845 F.3d 1148, 1156
(Fed. Cir. 2017). See generally Appellant’s Br. For the rea-
sons that follow, we conclude that the Board’s findings on
motivation to combine and reasonable expectation of suc-
cess are supported by substantial evidence. We address
Xerox’s arguments regarding objective indicia of nonobvi-
ousness in Part III below.
We hold that substantial evidence supports the Board’s
finding that it would have been obvious to modify Chen to
include Chi’s teaching of determining proximal infor-
mation because “Chi and Chen have similar goals of recom-
mending information based on similar techniques” and
“Chi suggests using proximal information on the user path
of Chen” to “provide better recommendations of infor-
mation to satisfy a user’s needs.” J.A. 69–70. As the Board
reasonably found, Chen states that “[i]t is desirable to be
able to exploit and combine information available from all
possible modalities” and “[a]ny type of information that is
available about users is collected.” J.A. 60 (alterations in
5 U.S. Patent Publication No. 2002/0143802.
Case: 23-1913 Document: 47 Page: 12 Filed: 06/17/2025
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XEROX CORP . v. X CORP . 13
original) (citations omitted). Chen provides that “[t]ext is
extracted from the document [] and used to create a corre-
sponding text vector [] and a corresponding URL vector [].”
J.A. 1589 ¶ 42. “The text feature is a term vector, where
the elements of the vector represent terms used in the doc-
ument itself. . . . [F]or an all-text or HTML document (or
other document type actually containing text), the text vec-
tor is based on the document’s entire text content.”
J.A. 1590 ¶ 51. Chen also discloses that “[t]he text features
include the words of text surrounding and associated with
each image, the URL of the image, . . . [and] hyperlink
text.” J.A. 1598 ¶ 101. Accordingly, Chen itself expressly
contemplates extracting words of text surrounding and as-
sociated with each image, the URL of the image, and hy-
perlink text. Chi goes a step further and expressly
identifies proximal information by name. Chi provides
that “[t]he content of pages associated with . . . links is usu-
ally presented to the user by some snippets of text or
graphic. Foragers use these proximal cues (snippets;
graphics) to assess the distal content (page at the other end
of the link).” J.A. 1650.
The Board also reasonably found that X Corp.
“show[ed] that one of Chen’s goals is similar to Chi’s,
namely to satisfy a user’s information needs.” J.A. 69.
Chen discloses a system for “recommending information,”
J.A. 1584, and “navigation assistance” for users. J.A. 1585
¶ 6. And Chi discloses the desire to “infer information
needs” and “[u]nderstand[] the information needs of users.”
J.A. 1650. Based on this record, we conclude that substan-
tial evidence supports the Board’s finding of motivation to
combine Chi with Chen.
We also disagree with Xerox’s argument that “the
Board’s expectation-of-success finding is based on an erro-
neous, obvious-to-try theory.” Appellant’s Br. 50. This is
not a case in which a person of ordinary skill in the art
would have been motivated “merely to vary all parameters
or try each of numerous possible choices until one possibly
Case: 23-1913 Document: 47 Page: 13 Filed: 06/17/2025
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XEROX CORP . v. X CORP . 14
arrived at a successful result, where the prior art gave ei-
ther no indication of which parameters were critical or no
direction as to which of many possible choices is likely to
be successful.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1365 (Fed. Cir. 2007) (citation omitted). Here, the prior art
provides guidance on the information to use to enhance
navigation, thereby supporting the Board’s reasonable ex-
pectation of success finding. Again, Chi explains that
“[f]oragers use . . . proximal cues (snippets; graphics) to as-
sess the distal content (page at the other end of the link).”
J.A. 1650. And, as explained above, Chen expressly con-
templates extracting words of text surrounding and associ-
ated with each image, the URL of the image, and hyperlink
text. Based on this record, we conclude that substantial
evidence supports the Board’s finding of reasonable expec-
tation of success.
III
Last, we review the Board’s findings related to objec-
tive indicia of nonobviousness, specifically unexpected re-
sults. On appeal, Xerox argues that the Board erred in its
analysis of nexus, as well as in its alternative finding that
the evidence of obviousness outweighs the strength of
Xerox’s evidence of unexpected results. Because we con-
clude that substantial evidence supports the Board’s
weighing of the relative strength of the evidence of obvious-
ness versus unexpected results, we affirm on the later
ground and need not address Xerox’s nexus argument.
“[O]bjective evidence of nonobviousness must be objec-
tive factual evidence, and not merely argument or conclu-
sory statements of the applicant.” In re Nilssen, 847 F.2d
841 (Table), 1988 WL 32917, at *2 (Fed. Cir. 1988) (empha-
sis added) (citing In re de Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984)). Such “[f]actual evidence can be in the
form of patents, publications in the relevant art, data from
tests or experiments and affidavits of persons skilled in the
art . . . .” Id.
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XEROX CORP . v. X CORP . 15
As the Board recognized, Xerox relied on a “proposal
submitted by the inventors of the ’475 patent”—i.e., the
“Invention Proposal”—made about eleven months before
the patent filing date. J.A. 79. That proposal states,
among other things, that “[t]he basic idea is that terms
found in and around the links actually traversed by the
user are more likely to represent the actual interests of the
user.” J.A. 3287. Xerox’s expert, however, conceded that
this concept was known at the time of the invention. The
Board thus reasonably found that using content words near
or in a link to obtain accurate clustering results is not sur-
prising. Moreover, as the Board recognized, the Invention
Proposal attributed the increased accuracy to factors in ad-
dition to or other than the general use of proximal infor-
mation. The invention proposal states that choosing the
correct weighting schemes and data modalities allowed the
inventors to achieve accuracies as high as 99%. The Board
thus reasonably found that “[t]he Invention Proposal does
not show that using proximal information provided any-
thing surprising in the way of accuracy or otherwise.”
J.A. 85. Accordingly, we conclude that the Board’s finding
that “little or no evidence exists to support the conclusory
allegation of unexpected results” is supported by substan-
tial evidence. J.A. 80.
C ONCLUSION
We have considered Xerox’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we re-
ject Xerox’s challenges to the Board’s decision and affirm.
AFFIRMED
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