Ex Parte Keely et al - Page 6


                   Appeal No. 2006-3038                                                                                             
                   Application No. 09/750,288                                                                                       


                   Morishita is associated with objects of the displayed image (i.e., the electronic ink                            
                   has a distinct spatial relationship to the underlying objects).  Moreover, the                                   
                   electronic ink is “overlaid” onto the image to remove desired portions thereof.                                  
                   Although we do not agree with the examiner’s contention that Morishita’s                                         
                   embedding of a writing section using a special ink in the information writing                                    
                   section 11 meets the claimed embedded ink limitation [see Morishita, col. 30, line                               
                   64 – col. 31, line 10], the claim nevertheless recites embedded and overlaid ink                                 
                   in the alternative.2  Since we find that Morishita reasonably discloses overlaid                                 
                   ink, that alternative is fully met.  For the above reasons, all limitations of claim 2                           
                   are fully met by Morishita, and the examiner’s anticipation rejection will therefore                             
                   be sustained.                                                                                                    
                           Regarding claim 7, appellants argue that Morishita does not disclose                                     
                   anchoring the electronic ink to the at least one object by adding a link at or near                              
                   the object pointing to the electronic ink as claimed [brief, pages 19 and 20].  The                              
                   examiner argues that the limitation is met by Morishita in Fig. 44A since the                                    
                   electronic ink in that figure is “anchored” to the circled written image.  The                                   
                   examiner further notes that Morishita’s link to a search region fully meets the                                  
                   claimed added link [answer, pages 7 and 14].                                                                     
                           We will sustain the examiner’s rejection of claim 7.  Morishita enables the                              
                   user to (1) identify certain writing content within a desired region, and (2) search                             
                   the identified content from the information storing section 13.  In Fig. 44A, for                                
                                                                                                                                    
                   2 Claim 2 recites, in pertinent part, “classifying…said electronic ink as one of embedded and                    
                   overlaid ink” [emphasis added].                                                                                  

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