Appeal No. 97-1223 Page 25
Application No. 08/147,143
have suggested the menu page button of claim 34. Claim 34
recites in pertinent part “the contents of the electronic book
include one or more menu pages which provide navigational
assistance within the electronic book, the menu page
immediately preceding the current page becoming the current
page when a menu page button in the navigation dialog box is
selected ...." (Amendment A at 6.)
Comparison of the claim language to the references’
teaching evidences the references would not have suggested
the claimed menu page button. The claimed menu page is
displayed when the menu page button is selected. Neither
Capps nor Slate teaches a menu page button. Although Soviero
teaches a MENU button as aforementioned, it is unclear what
contents are displayed when the menu button is selected.
Thus, it is unclear whether it performs the function of the
claimed menu page button. For the foregoing reasons, the
examiner failed to show the references would have suggested
the menu page button of claim 34. Accordingly, we find the
examiner’s rejection of this claim does not amount to a prima
facie case of obviousness. Because the examiner has not
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