Appeal No. 97-0191
Application 08/331,151
evidence relied upon and the level of skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention set forth in claims 11-14 and 36-38.
Accordingly, we reverse.
We consider first the rejection of claims 1-4, 7-10, and 15-35 under 35 U.S.C. § 102(b) as
anticipated by Sklarew. Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a claimed invention as well as
disclosing structure which is capable of performing the recited functional limitations. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Assoc, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to independent claims 1, 25, and 31 which are directed to the display of formatted
paragraphs having both recognized text words and unrecognized ink words, the Examiner attempts to
read the various limitations on the Sklarew reference (Answer, pages 4-6). In response, Appellants
argue several alleged distinctions over Sklarew including the contention (Brief, page 11) that Sklarew
does not display recognized text words and unrecognized handwritten words grouped together in the
same paragraph as claimed.
Upon careful review of the Sklarew reference and the arguments of record, we are in
agreement with Appellants’ stated position in the Brief. In our view, Appellants are correct in their
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