Ex Parte Salesin et al

Board of Patent Appeals and Interferences

May 22, 2009

10159640 (B.P.A.I. May. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID SALESIN AND TOMER MOSCOVICH
____________

Appeal 2008-002578
Application 10/159,6401
Technology Center 2600
____________

Decided:2 May 22, 2009
____________

Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
SCOTT R. BOALICK, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

1 Application filed May 31, 2002. The real party in interest is Microsoft
Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-37. Claim 38 has not been rejected.3 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants' invention relates to "creating multiple versions of portions
of an electronic presentation and allowing a presenter to select the desired
portions while giving the presentation." (Spec. 1:13-15.)

Claims 1, 22, and 37 are exemplary:
1. A computer-implemented process for presenting an
electronic presentation, comprising using a computer to
perform the following process actions:

inputting a set of slides, said slides representing the
contents of a presentation;

3 The originally filed application included claims numbered from 1 to 37,
however there were two claims numbered as 17. In an amendment received
December 28, 2004, Appellants canceled the second claim 17 and added
new claim 38, which recites the same subject matter. Appellants also
amended claim 18 to depend from claim 38 rather than 17. However, the
Examiner appears to have overlooked this renumbering and did not reject
new claim 38 in any subsequent office action. Although claim 38 has not
been rejected, claim 18, which depends from claim 38, was rejected under
35 U.S.C. § 102(b). In an Answer mailed November 30, 2005, the Examiner
included a new ground of rejection rejecting claim 38 under 35 U.S.C.
§ 102(b), but failed to obtain the required signature of a Technology Center
Director or designee. The present Answer, mailed July 11, 2007, does not
contain that new ground of rejection.
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grouping said set of slides into one or more subgroups of
slides; and

creating a plurality of section paths for each subgroup,
wherein each section path represents the order in which each
slide in the subgroup is presented.

22. A graphic user interface for presenting an electronic
presentation viewed on a display device, comprising a user
interface for selecting between a default sequence of slides
containing presentation content and at least one alternative
sequence of slides containing presentation content.

37. A computer-readable medium having computer-
executable instructions for creating and controlling an
electronic presentation, said computer executable instructions
comprising:

creating an electronic presentation, comprising a plurality
of slides encompassing presentation data arranged in a plurality
of sequences;

displaying the plurality of slides arranged in a plurality of
sequences on a first computer screen;

allowing a user to select in real time a subset of the
plurality of sequences of slides during presentation on a first
computer screen; and

displaying the slides selected on a second display device.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
S. Feiner, S. Nagy & A. van Dam, An Experimental System for
Creating and Presenting Interactive Graphic Documents, ACM
Transactions on Graphics, Vol. 1, No. 1, 59-77 (January 1982) ("Feiner")
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Claims 1-29, 33-35, and 37 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Feiner.
Claims 30-32 and 36 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Feiner.
Except as noted in this opinion, Appellants have not presented any
substantive arguments directed separately to the patentability of the
dependent claims or related claims in each group. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See 37 C.F.R. § 41.37(c)(1)(vii). Only
those arguments actually made by Appellants have been considered in this
opinion. Arguments that Appellants did not make in the Briefs have not
been considered and are deemed to be waived. See id.

ISSUES
§ 102(b) Rejection - Feiner
Appellants argue that Feiner does not teach "grouping said set of
slides into one or more subgroups of slides" and "creating a plurality of
section paths for each subgroup, wherein each section path represents the
order in which each slide in the subgroup is presented," as recited by
claim 1. (App. Br. 6-10; Reply Br. 2-3.) In particular, Appellants argue that
the links taught by Feiner are not "predetermined section paths" (App.
Br. 6, 9; Reply Br. 3) and that the Specification distinguishes Feiner's links
from the claimed paths (App. Br. 9; Reply Br. 3; see also FF 1).
Also, Appellants argue that:
(1) the multiple window display of Feiner's Figure 4 does not show
the order in which each chapter/subchapter is presented and instead "merely
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teaches allowing a viewer to link from one page to another via hyper
link . . . there is no predetermined path as to which links you must
select" (App. Br. 8-9). According to Appellants, "[y]ou can go back and
forth and choose various paths to view items as long as there is a link
available. . . . [but] [t]here are no predetermined section paths taught in
Feiner, there are merely links that allow a user to go from page to page
at will when the urge strikes" (App. Br. 9);
(2) the timeline page of Feiner's Figure 7 merely "allows a user to
view the most recently viewed pages in chronological order. . . . [but]
does not allow a user to view a path into the future" (App. Br. 8; see also
App. Br. 7);
(3) the index page of Feiner's Figure 8 merely shows "all pages
associated with a user-selected key word . . . . [but] does not show a
section path that represents the order in which each slide in the
subgroup is presented" (App. Br. 8); and
(4) the neighbors page of Feiner's Figure 9 "does not allow a user to
readily create, view and select a [sic] different slide sequences or section
paths based on, for example, the interests and needs of the audience"
(App. Br. 7) and "Feiner's system merely allows a user to determine which
slides precede or follow a given slide after they have been viewed" (App.
Br. 7).
With respect to independent claim 22, Appellants argue that Feiner
does not teach "selecting between a default sequence of slides containing
presentation content and at least one alternative sequence of slides
containing presentation content," as claimed. (Reply Br. 4.) According to
Appellants, "[t]here is no predetermined loop or path taught on page 67
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(or pages 68-71) [of Feiner]" (Reply Br. 4) and creating a path by linking
during the display of different slides is not the same as the claimed selecting
between a default sequence of slides and at least one alternative sequence of
slides (Reply Br. 4).
With respect to independent claim 37, Appellants argue that Feiner
does not teach "creating an electronic presentation, comprising a plurality of
slides encompassing presentation data arranged in a plurality of sequences"
and "displaying the plurality of slides arranged in a plurality of sequences on
a first computer screen," as claimed. (Reply Br. 4.) According to
Appellants, "allowing a user to select from many actions (buttons) on a
computer screen is not the same as creating a plurality of slides
arranged in a plurality of sequences. Nor are several different
computer displays which are displayed at different times the same as a
plurality of slides arranged in a plurality of sequences which are
displayed on a computer screen." (Reply Br. 4.) Appellants contend that
Feiner does not teach "the advantageous features of the Appellants' claimed
invention such as being able to easily create a variety of slide sequences and
vary the slide sequences . . . in real time." (Reply Br. 4-5.)
Appellants also contend, without further explanation or support, that
Feiner does not teach various other claim limitations -- apparently those of
claims 8 and 10 -- in addition to the limitations of claims 1, 22, and 37
mentioned above. (App. Br. 10; Reply Br. 5.)
Appellants' arguments present the following issue:
Have Appellants shown that the Examiner erred in rejecting claims
1-29, 33-35, and 37 under 35 U.S.C. § 102(b)?
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The resolution of this issue turns on the following subsidiary issues:
1. Have Appellants shown that the Examiner erred in finding that a
link, as taught by Feiner, meets the claimed limitation of a "section path"?
2. Have Appellants shown that the Examiner erred in finding that
Feiner teaches grouping a set of slides into one or more subgroups of slides
and creating a plurality of section paths for each subgroup, where each
section path represents the order in which each slide in the subgroup is
presented, as recited by claim 1?
3. Have Appellants shown that the Examiner erred in finding that
Feiner teaches a user interface for selecting between a default sequence of
slides and at least one alternative sequence of slides, as recited by claim 22?
4. Have Appellants shown that the Examiner erred in finding that
Feiner teaches creating an electronic presentation with a plurality of slides
encompassing presentation data arranged in a plurality of sequences,
displaying the plurality of slides arranged in a plurality of sequences on a
first computer screen, and allowing a user to select in real time a subset of
the plurality of sequences of slides during presentation on a first computer
screen, as recited by claim 37?

§ 103 Rejection - Feiner
Appellants repeat the argument that Feiner does not teach selecting
between a default sequence of slides and at least one alternative sequence of
slides, as recited by independent claim 22 from which claims 30-32 and 36
ultimately depend. (App. Br. 12; Reply Br. 7.) In particular, Appellants
contend that "Feiner does not allow the presenter to select from a default and
alternative sequences of presentation while presenting thus allowing the
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speaker to easily customize their presentation during delivery." (App.
Br. 12.) Appellants contend that highlighting a button for linking on a web
pages, as disclosed by Feiner, is not the same as highlighting a flow line that
shows a path that a set of slides would be presented in if that path were
selected. (Reply Br. 7.)
Appellants also contend, without further explanation or support, that
Feiner does not teach various other claim limitations, apparently those of
claims 30, 31, 32, and 36, in addition to the limitations of claim 22
mentioned above. (Reply Br. 8-9.)
Appellants' arguments present the following issue:
Have Appellants shown that the Examiner erred in rejecting claims
30-32 and 36 under 35 U.S.C. § 103(a)?
The resolution of this issue turns on whether Appellants have shown
that the Examiner erred in finding that Feiner teaches selecting between a
default sequence of slides and at least one alternative sequence of slides, as
recited by independent claim 22.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. The "BACKGROUND" section of the Specification states that:
The document presentation system of Feiner et al. [1]
provided for the creation of hierarchical hyperlinked
documents. The system was used for maintenance and
repair manuals, and could be used to give presentations,
but without customizable paths the speaker was forced to
invent the presentation sequence on the fly.
(Spec. 3:4-8.)
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2. Subsection 2.2.1, entitled "Background," of subsection 2.2, entitled
"Structuring an Adaptable Presentation," of subsection 2, entitled
"Adaptable Presentation System and Method," of the "DETAILED
DESCRIPTION OF THE PREFERRED EMBODIMENTS" section
of the Specification teaches that:
There are many possible ways to structure an adaptable
presentation from a collection of slides. . . . Another
possibility, one that may be implemented with current
technology, is to create hyperlinks between slides,
structuring the presentation as a directed graph. This
approach lets the speaker build in some sequencing and
dependency during authoring, while providing substantial
flexibility at presentation time. However, it still requires
the speaker to make a choice at each branch point, and as
the presentation becomes more complex the demands on
the speaker increase.

(Spec. 16:5-17.)

3. Feiner describes a system "for the design, development, and
presentation of computer-based documents that combine pictures and
text." (Page 59.) The documents in Feiner are directed graphs whose
nodes are called pages. (Pages 59, 60.) Each page has text and
graphics, as well as associated actions that may, for example, access
new pages. (Page 60.) The "[p]ages may be placed in arbitrarily
deeply nested chapters that serve much the same organizing function
as those of paper books. The document itself is treated as a chapter
containing those highest level chapters and pages." (Page 60.) The
document "has cross-reference facilities that allow any part of a
document to reference or actually access any other part of it or another
document." (Page 60.) The system of Feiner discloses a graphical
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authoring interface of the kind used to display tree-structured
databases and allows for easily manipulating the rich directed-graph
structure. (Page 60.) Feiner teaches picture layout, which is the
creation of individual pictures (pages 60-63), document layout, which
includes page layout and chapter layout (pages 60-61, 63-67), and
document presentation, which involves the interaction of the user with
the document (pages 61, 67-71). The system of Feiner may be used
for a slide show. (Page 63.)

4. As part of document layout, Feiner teaches that page layout involves
combining pictures on a page and associating actions with the page
and its components and that chapter layout involves the creation of a
chapter hierarchy and a high-level interconnection structure. (Pages
60-61.) The author interconnects pages and may use picture elements,
such as buttons, to invoke an action such as accessing a destination
page. (Pages 63, 65.) The system of Feiner allows multiple windows.
(Page 66; Fig. 4.) "Typically, one window is used to maintain an
overview of the document, while the other windows show chapters
and pages of interest." (Page 66.) "The author may traverse the
document's structure independently in each window and make links
between chapters and pages in different windows." (Page 67; Fig . 4.)

5. Feiner teaches that the directed-graph structure of the document is
created by connecting the pages with links, which are created by the
author and allow any page to potentially be connected with any other
page. (Pages 65-66.) "A link has a source and a destination, and
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indicates that there is some action that the reader can execute in the
source page that will access the destination page." (Page 65.) Links
may be bi-directional. (Page 66.) "The author can also request more
information about a link or cause the links associated with a page or
chapter to be highlighted." (Page 66.)

6. As part of document presentation, Feiner teaches that the document is
usually traversed by touching buttons that cause new pages to be
accessed, thus traversing the directed graph. (Page 67.) Different
documents may provide different capabilities for different audiences
(page 67) because the directed-graph structure makes "possible a
variety of documents suited to widely different purposes and
audiences" (page 75).

7. Referring to Figure 7, Feiner teaches a timeline page. (Page 70.) The
timeline page is "a pictorial transcript of the current session" (page 70)
where the pages appear in chronological order (page 71) and buttons
allow the reader to move forward and backward along the timeline to
examine pages viewed earlier (page 70). In addition, "[t]ouching a
page takes the reader back to that page." (Page 71.)

8. Referring to Figure 8, Feiner teaches an index page. (Pages 70-71.)
The index page is an alphabetized display of pages. (Pages 70-72.)

9. Referring to Figure 9, Feiner teaches a neighbors page. (Page 71.)
The selected page is at the center and surrounded by possible
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predecessors and successors. (Page 71.) Figure 9 discloses multiple
paths between the page at the center and its predecessors and multiple
paths between the page at the center and its successors. "Arrows
emanate from the center of buttons on the center page and its
predecessors and terminate on the pages they can access. Touching a
page makes it the current page." (Page 73.)

PRINCIPLES OF LAW
On appeal, all timely filed evidence and properly presented arguments
are considered by the Board. See In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984).
In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. Id. at 1472.
When that burden is met, the burden then shifts to the Applicant to rebut.
Id.; see also In re Harris, 409 F.3d 1339, 1343-44 (Fed. Cir. 2005) (finding
rebuttal evidence unpersuasive). If the Applicant produces rebuttal evidence
of adequate weight, the prima facie case of unpatentability is dissipated. In
re Piasecki, 745 F.2d at 1472. Thereafter, patentability is determined in
view of the entire record. Id. However, on appeal to the Board it is the
Appellants' burden to establish that the Examiner did not sustain the
necessary burden and to show that the Examiner erred. See In re Kahn, 441
F.3d 977, 985-86 (Fed. Cir. 2006).
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
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1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
(Fed. Cir. 1994).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
In KSR, the Supreme Court reaffirmed that "[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." Id. at 416. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417.
During examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). "[T]he words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The "ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
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question at the time of the invention, i.e., as of the effective filing date of the
patent application." Id. at 1313.

ANALYSIS
Initially, we note that Appellants complain about the Examiner's
failure to grant an interview. (App. Br. 5-6.) This is not an appealable
matter for the Board and we will not consider it further. See MPEP § 1201
("The line of demarcation between appealable matters for the Board of
Patent Appeals and Interferences (Board) and petitionable matters for the
Director of the U.S. Patent and Trademark Office (Director) should be
carefully observed. The Board will not ordinarily hear a question that
should be decided by the Director on petition.")

§ 102(b) Rejection - Feiner
Appellants' arguments that the Examiner erred in rejecting
claims 1-29, 33-35, and 37 as being anticipated by Feiner are not persuasive.

Claims 1-7
With respect to claim 1, the Examiner correctly found that Feiner
teaches "grouping said set of slides into one or more subgroups of slides"
and "creating a plurality of section paths for each subgroup wherein each
section path represents the order in which each slide in the subgroup is
presented," as claimed. (Ans. 4, 30; see also Ans. 3-8, 30-41, FF 3-9.)
Feiner teaches these limitations by, among other things, teaching a document
with linked pages where the pages are grouped into one or more chapters
and the links represent the order in which the pages are presented. (FF 3-5.)
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The language of claim 1 is quite broad. All that the disputed
limitations of claim 1 require is that a set of slides be grouped into one
subgroup, without limitation upon the number of slides required to be in the
"set" that makes up the subgroup. In addition, the disputed language
requires that there be more than one section path, and that each section path
represent the order in which the set of slides in a subgroup is presented.
Therefore, two slides connected by a bi-directional link satisfies the broad
recitation in claim 1 of grouping a set of slides into one or more subgroups
(i.e., two slides are a set that is grouped into one subgroup) and creating a
plurality of section paths (i.e., two paths are created for a bi-directional link)
for the one subgroup, where each section path represents the order in which
each slide in the subgroup is presented (i.e., each of the two paths represents
the order of presentation).
Thus, under the broadest reasonable interpretation of the claim
consistent with the Specification we agree with the Examiner that a link, as
disclosed by Feiner, meets the claimed "section path." Appellants'
arguments that the Specification distinguishes Feiner's links are not
convincing. The background section of the Specification states that the
system of Feiner "could be used to give presentations, but without
customizable paths the speaker was forced to invent the presentation
sequence on the fly." (FF 1.) Creating a link as disclosed by Feiner (FF 5)
does create a customizable path. Although this path, once created, can be
considered to be predetermined, the broad language of claim 1 does not
preclude inventing the presentation sequence on the fly. Our interpretation
is consistent with the Specification. Indeed, the Specification teaches that
one possible way of structuring an adaptable presentation using current
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technology is to create hyperlinks between slides (FF 2), just as in the
system of Feiner. While this may not be the most preferred approach, it
nevertheless is disclosed by the Specification as a "possibility" (FF 2).
Appellants' arguments regarding predetermined section paths,
regarding allowing a user to view a path into the future, and regarding
creating section paths based on the interests and needs of the audience are
not germane because claim 1 does not recite these limitations and we decline
Appellants' invitation to import them.
Therefore, Appellants have not shown that the Examiner erred in
finding that a link, as taught by Feiner, meets the claimed limitation of a
"section path," and that Feiner teaches grouping a set of slides into one or
more subgroups of slides and creating a plurality of section paths for each
subgroup, where each section path represents the order in which each slide
in the subgroup is presented.
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b). Claims 2-7
were not argued separately, and fall together with claim 1.

Claims 22-29 and 33-35
With respect to claim 22, we agree with the Examiner that Feiner
teaches selecting between a default sequence of slides and at least one
alternative sequence of slides, as claimed. (Ans. 20, 33-35; FF 6-9.) In
particular, the "neighbors page" of Feiner discloses multiple paths between a
slide and its predecessors and multiple paths between the slide and its
successors. (FF 9.) One of the paths between the slide and its predecessor
and/or the slide and its successor satisfies the limitation of a default
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sequence. The other paths satisfy the limitation of at least one alternative
sequence. Claim 22 does not recite that the paths are predetermined.
Nevertheless, once the link is created the path between the slides connected
by the link becomes predetermined.
In addition, as with claim 1, claim 22 does not limit how many slides
must be present to form a sequence. Therefore, a slide and a predecessor
slide connected by a link and/or that slide and a successor slide connected by
a link meets the "default sequence" limitation recited by claim 22. In
addition, that slide and a different predecessor slide connected by a link
and/or that slide and a different successor slide connected by a link meets the
"alternative sequence" limitation recited by claim 22.
Therefore, Appellants have not shown that the Examiner erred in
finding that Feiner teaches a user interface for selecting between a default
sequence of slides and at least one alternative sequence of slides.
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in rejecting claim 22 under 35 U.S.C. § 102(b). Claims
23-29 and 33-35 were not argued separately, and fall together with claim 22.

Claim 37
With respect to claim 37, we agree with the Examiner that Feiner
teaches creating an electronic presentation with a plurality of slides
encompassing presentation data arranged in a plurality of sequences,
displaying the plurality of slides arranged in a plurality of sequences on a
first computer screen, and allowing a user to select in real time a subset of
the plurality of sequences of slides during presentation on a first computer
screen. (Ans. 25-26, 37-39; FF 4-9.)
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As discussed with respect to claim 22, the "neighbors page" of Feiner
discloses multiple paths between a slide and its predecessors and multiple
paths between the slide and its successors. (FF 9.) The paths between the
slide and its predecessors and/or the slide and its successors satisfy the
limitation of a plurality of slides arranged in a plurality of sequences, which
are created and displayed on a first computer screen (FF 9). As the
Examiner correctly found, Feiner teaches multiple displays. (Ans. 25-26;
FF 4.)
As with claims 1 and 22, claim 37 does not limit how many slides
must be present to form a sequence. Therefore, a slide and a predecessor
slide connected by a link and/or that slide and a successor slide connected by
a link meet the "sequence" limitation recited by claim 37. In addition, that
slide and a different predecessor slide connected by a link and/or that slide
and a different successor slide connected by a link meet the "plurality of
sequences" limitation recited by claim 37.
Feiner teaches allowing a user to select, in real time, a subset of the
plurality of sequences of slides during presentation on a first computer
screen by teaching that, on the neighbors page, "[t]ouching a page makes it
the current page" (FF 9). Claim 37 does not limit the size of a "subset" of
sequences. Therefore, selecting in real time a subset of one sequence of two
slides by selecting a page linked with another page meets this limitation.
Therefore, Appellants have not shown that the Examiner erred in
finding that Feiner teaches creating an electronic presentation with a
plurality of slides encompassing presentation data arranged in a plurality of
sequences, displaying the plurality of slides arranged in a plurality of
sequences on a first computer screen, and allowing a user to select in real
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time a subset of the plurality of sequences of slides during presentation on a
first computer screen.
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in rejecting claim 37 under 35 U.S.C. § 102(b).

Claims 8-21
With respect to Appellants' summary allegation that various claim
limitations, apparently those of independent claims 8 and 10, are not taught
by Feiner, we agree with the Examiner (Ans. 12-15; FF 3-9) that Feiner
teaches these limitations. Appellants have not made any effort to show error
in the Examiner's findings and reasoning. Therefore, we affirm the rejection
of claims 8 and 10 for the reasons stated by the Examiner. Claims 9 and
11-21 were not argued separately, and fall together with claims 8 and 10
from which they depend.
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in rejecting claims 1-29, 33-35, and 37 under 35 U.S.C.
§ 102(b).
§ 103 Rejection - Feiner
Appellants' arguments that the Examiner erred in rejecting claims
30-32 and 36 as being obvious over Feiner are not persuasive.
As discussed supra, Appellants have not shown that the Examiner
erred in finding that Feiner teaches selecting between a default sequence of
slides and at least one alternative sequence of slides, as recited by
independent claim 22.
With respect to Appellants' summary allegation that various claim
limitations, apparently those of claims 30, 31, 32, and 36, are not taught or
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suggested by Feiner, we agree with the Examiner (Ans. 26-30; FF 3-9) that
Feiner teaches or suggests these limitations. Appellants have not made any
effort to show error in the Examiner's findings and reasoning. Therefore, we
affirm the rejection of claims 30-32 and 36 for the reasons stated by the
Examiner.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We make the following new grounds of rejection using our authority
under 37 C.F.R. § 41.50(b).
35 U.S.C. § 101
Claim 37 is rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claim 37 recites a "computer-readable medium." The Specification
teaches that "computer readable media may comprise . . . communication
media" (Spec. 11:7-9) and "[c]ommunication media typically embodies . . .
other data in a modulated data signal such as a carrier wave"
(Spec. 11:17-20). Therefore, a computer readable medium includes a signal
embodied in a carrier wave. A signal embodied in a carrier wave is not
statutory subject matter because it does not fall within any of the four
categories of statutory subject matter. See In re Nuijten, 500 F.3d 1346,
1357 (Fed. Cir. 2007). We thus reject claim 37 as embracing non-statutory
subject matter.
35 U.S.C. § 102(b)
Claim 38 is rejected under 35 U.S.C. § 102(b) as being anticipated by
Feiner.
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Claim 38 depends from claim 15 and additionally recites the claim
limitation of a path indicator being associated with each sequence order of
slides within a group. However, Feiner discloses a path indicator being
associated with each sequence order of slides within a group because, among
other things, the author of a presentation can cause the links associated with
a slide or chapter to be highlighted. (Feiner, page 66).
In addition, we note that Appellants have not shown error in the
§ 102(b) rejection of claim 18, which depends from claim 38. Since claim
18, which contains all of the limitations of claim 38, is anticipated by Feiner,
claim 38 also must be anticipated by Feiner.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b).
37 C.F.R. § 41.50(b) provides that, "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner …
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record …

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CONCLUSION
Based on the findings of facts and analysis above, we conclude that:
(1) Appellants have not shown that the Examiner erred in rejecting
claims 1-29, 33-35, and 37 under 35 U.S.C. § 102(b).
(2) Appellants have not shown that the Examiner erred in rejecting
claims 30-32 and 36 under 35 U.S.C. § 103(a).
(3) Claim 37 is unpatentable under 35 U.S.C. § 101 because it is
directed to non-statutory subject matter.
(4) Claim 38 is unpatentable under 35 U.S.C. § 102(b) because it is
anticipated by Feiner.

DECISION
The rejection of claims 1-29, 33-35, and 37 under 35 U.S.C. § 102(b)
is affirmed.
The rejection of claims 30-32 and 36 under 35 U.S.C. § 103(a) is
affirmed.
Claim 37 is rejected under 35 U.S.C. § 101.
Claim 38 is rejected under 35 U.S.C. § 102(b).
New grounds of rejection have been entered under 37 C.F.R.
§ 41.50(b).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
New grounds of rejection under 37 C.F.R. § 41.50(b)
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23

rvb

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