Ex Parte Mewherter et al

Board of Patent Appeals and Interferences

Mar 31, 2011

10685192 (B.P.A.I. Mar. 31, 2011)

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.
10/685,192 10/14/2003 Duncan L. Mewherter LOT920030025US1 (010) 4172
46321 7590 04/01/2011
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
DEBROW, JAMES J
ART UNIT PAPER NUMBER
2176
MAIL DATE DELIVERY MODE
04/01/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DUNCAN L. MEWHERTER, AMY D. TRAVIS,
KOAH-HSING WANG, and ROBERT C. WEIR
____________

Appeal 2009-009636
Application 10/685,192
Technology Center 2100
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
JOHN A. JEFFERY, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-22, which are all the claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Invention
Appellants’ invention relates to a system, method and apparatus for
converting a slide show presentation for use within a non-presentation
application such as a Web conferencing or virtual classroom application. A
slide show presentation in its native format is processed to extract slide title
information for each slide in the slide show presentation. Additional text
within the slide can also be extracted. Each slide in the slide-show is
converted to a raster image and disposed within markup. The markup can be
annotated with the important text and both the markup and the slide title can
be provided to the non-presentation application for use in concert with the
non-presentation application. In this way, the context of each slide can be
preserved for use within the non-presentation application as can an image of
each slide itself. Abstract.

Representative Claim
1. A system for converting slide show presentations
for use within non-presentation applications, the system
comprising:

a slide show produced by a slide show presentation
application and stored in a native format; and,

a slide show conversion process configured for coupling
to a non-presentation application and programmed both to
extract contextual data from said slide show in its native format,
and also to convert associated slides in said slide show to raster
imagery for use in said non-presentation application.

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Examiner’s Rejections1
Claims 1-5 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1 and 5 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Erol (US 2004/0202349 A1).
Claims 2-4, 6-9, 12, 14-19, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Erol and Chakraborty (US
2004/0194035 A1).
Claims 10, 11, 13, 20, and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Erol, Chakraborty, and Chatterjee (US 7,162,691
B1).

Claim Groupings
In view of Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
(1) Is claim 1 directed to computer software per se?
(2) Does Erol disclose extracting “contextual data from said slide
show in its native format” and converting “associated slides in said slide
show to raster imagery” as recited in claim 1?

1 The Examiner objected to the Specification for failing to provide proper
antecedent basis for the “machine readable storage” recited in claim 16. Rej.
3. Since this is a petitionable— not appealable—matter, we will not address
this objection. See MPEP § 706.01 (“[T]he Board will not hear or decide
issues pertaining to objections and formal matters which are not properly
before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily
hear a question that should be decided by the Director on petition….”).
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FINDINGS OF FACT
We rely on the findings of fact made by the Examiner in the Rejection
and the Examiner’s Answer.

PRINCIPLES OF LAW
Claim Interpretation
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (citations omitted). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. Id. (citations omitted).

Statutory Subject Matter
“The four categories [of § 101] together describe the exclusive reach
of patentable subject matter. If a claim covers material not found in any of
the four statutory categories, that claim falls outside the plainly expressed
scope of § 101 even if the subject matter is otherwise new and useful.” In re
Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007).

Anticipation
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
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in the claim.” Lindemann Maschinenfabrik GmbH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).

ANALYSIS
Section 101 rejection of claims 1-5
The Examiner finds that claim 1 is directed to a computer program per
se, which is non-statutory subject matter. Ans. 3-4. Appellants contend that
claim 1 recites a process that “extracts data from a slide show in its native
format, and also converts associated slides in the slide show to raster
imagery – a blatant transformation of an article or physical object to a
different state or thing.” App. Br. 8; Reply Br. 4-5.
The “system” of claim 1 comprises a “slide show” and a “process …
programmed both to extract contextual data … and also to convert
associated slides in said slide show to raster imagery.” The claim does not
recite a process comprising a series of steps. The claim recites, at best, a
“slide show … stored in a native format” (e.g., data stored somewhere) and a
“process” that, if someday reduced to a tangible form, entered into a
computer memory, and executed by a computer, would cause the computer
to “extract” and “convert” data.
Even if the claim were to require performing an actual transformation
of data within a computer, simply extracting and converting data as claimed
would not appear to qualify as a transformation of an article to a different
state or thing. Our reviewing court identified a circumstance in which
electronic transformation of data into a particular visual depiction of a
physical object on a display may be considered a transformation sufficient to
render a claimed process patent-eligible. See In re Bilski, 545 F.3d 943,
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962-63 (Fed. Cir. 2008) (en banc) (discussing In re Abele, 684 F.2d 902,
908-09 (CCPA 1982)), aff’d sub nom. Bilski v. Kappos, 130 S. Ct. 3218
(2010). The transformation of data within a general purpose computer to
generate the “raster imagery” recited by claim 1 is not a type of
“transformation” that has been determined sufficient to render a claimed
method statutory by the Supreme Court or by our reviewing court.
Appellants do not appear to argue that the “process” is tied to a
particular machine or apparatus. Moreover, the claim appears so broad (see,
e.g., instant Fig. 1) as to encompass mere software modules for the
“process.” Software per se or a computer program per se does not fall
within a statutory class. “The four categories [of § 101] together describe
the exclusive reach of patentable subject matter. If a claim covers material
not found in any of the four statutory categories, that claim falls outside the
plainly expressed scope of § 101 even if the subject matter is otherwise new
and useful.” Nuijten, 500 F.3d at 1354. See also MPEP § 2106.01
(“USPTO personnel should treat a claim for a computer program, without
the computer-readable medium needed to realize the computer program’s
functionality, as nonstatutory functional descriptive material.”).
“Abstract software code is an idea without physical embodiment.”
Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). Because claim 1
is directed to software per se, which is not within any § 101 statutory class,
we are not persuaded of error in the Examiner’s rejection. We thus sustain
the Examiner’s rejection of claims 1-5 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

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Section 102 rejection of claims 1 and 5
Appellants contend that claim 1 requires the conversion of contextual
data in a slide show into raster imagery. Appellants also contend that Erol
does not disclose converting contextual data in a slide show into raster
imagery, but rather discloses converting raster imagery into textual data.
App. Br. 10-11; Reply Br. 5-6.
Claim 1 does not recite “conversion of contextual data in a slide show
into raster imagery.” Claim 1 recites “extract contextual data from said slide
show in its native format,” and “convert associated slides in said slide show
to raster imagery.” The Examiner finds that paragraphs [0032]-[0034],
[0111], and [0118] describe the limitations of claim 1. Ans. 5.
Appellants’ Specification states that the system includes a
presentation application, such as PowerPoint®, configured to produce a slide
show presentation. The contextual elements include text extracted from the
slide show presentation. Spec. 8:14-9:1. Paragraph [0111] of Erol describes
extracting text from a PowerPoint slide image (“extract contextual data from
said slide show”) by decoding the syntax of the PowerPoint file (“its native
format”). Appellants have not provided evidence or persuasive argument to
distinguish “extract contextual data from a slide show in its native format”
from extracting text from a PowerPoint slide as described by Erol.
Appellants’ Specification (at 3:9) and Appeal Brief (at 10) indicate
that a bitmap is an example of “raster imagery.” Paragraph [0033] of Erol
describes a symbolic information capture device that captures PowerPoint
presentation slides by storing the slides as a sequence of images, such as
JPEG or BMP (bitmap) images. Appellants have not provided evidence or
persuasive argument to distinguish “convert associated slides in said slide
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show to raster imagery” from capturing and storing slides of a PowerPoint
presentation as BMP images as described by Erol.
We sustain the rejection of claim 1 under 35 U.S.C. § 102. Appellants
have not provided arguments for separate patentability of claim 5, which
thus falls with claim 1.

Section 103 rejection of claims 2-4 and 6-22
Appellants have not provided arguments for separate patentability of
claims 2-4 and 6-22, which thus fall with claim 1.

CONCLUSIONS OF LAW
(1) Claim 1 is directed to computer software per se.
(2) Erol discloses extracting “contextual data from said slide show
in its native format” and converting “associated slides in said slide show to
raster imagery” as recited in claim 1.

DECISION
The rejection of claims 1-5 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter is affirmed.
The rejection of claims 1 and 5 under 35 U.S.C. § 102(e) as being
anticipated by Erol is affirmed.
The rejection of claims 2-4, 6-9, 12, 14-19, and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Erol and Chakraborty is affirmed.
The rejection of claims 10, 11, 13, 20, and 21 under 35 U.S.C.
§ 103(a) as being unpatentable over Erol, Chakraborty, and Chatterjee is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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