Ex parte DOUGLAS - Page 6




          Appeal No. 1996-3750                                                        
          Application No. 08/321,058                                                  


          annotation between pages in order to keep an annotation                     
          aligned with a selected location in the body of the word                    
          processor object.  Accordingly, there is no prima facie case                
          of obviousness established with regard to the subject matter                
          of instant claims 3 and 15 and we will not sustain the                      
          rejection of these claims under 35 U.S.C. § 103 based on the                
          evidence supplied by the examiner.                                          
               Turning now to claims 4 and 16, these claims add the                   
          limitation of adding a space in the body so as to maintain                  
          alignment of the annotation with the selected location.  We                 
          find no such teaching or suggestion in any of the applied                   
          references.  The examiner, again, relies on the “strongly                   
          bound” language of Cassorla for a conclusion of obviousness                 
          because “adding space so as to maintain the alignment would                 
          have further indicated the bounded nature of the annotation                 
          with the associated text” [answer-page 5].  The examiner                    
          further contends that it “is well-known” [answer-page 11] to                
          add or delete space for aesthetic and practical document                    
          layout and it would have been obvious "to have incorporated                 
          the addition of space in order to provide alignment of an                   
          annotation and its proper selection location" [answer-page                  
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