Ex Parte Keely et al - Page 8


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


                   inherently be edited via a layout engine – a feature that is ostensibly “inherently                              
                   available in any computer” [answer, page 15].                                                                    
                           We will not sustain the examiner’s rejection of claim 8.  In short, we find                              
                   the examiner’s arguments merely speculative and unpersuasive.  Even assuming                                     
                   that (1) Morishita necessarily has a text editor, and (2) this inherent text editor                              
                   somehow functions as a layout engine as claimed, the examiner has simply not                                     
                   shown how the text editor (or any other component of Morishita) re-flows the                                     
                   displayed information, yet maintains the relationship of the electronic ink to the                               
                   object(s) despite re-flow as claimed.  Even if the text within the curved or                                     
                   rectangular search region of Figs. 44A and 44B were edited as the examiner                                       
                   seems to suggest, we fail to see how Morishita’s system necessarily accounts for                                 
                   such changes by altering the relationship between the search region and the                                      
                   edited text (i.e., so that the original ink-to-object relationship is maintained).  For                          
                   at least the above reasons, Morishita does not disclose all limitations of claim 8.                              
                   Therefore, we will not sustain the examiner’s anticipation rejection of that claim.                              
                           Regarding claims 27 and 28, appellants argue that Morishita does not                                     
                   disclose a processor that (1) classifies electronic ink and associates electronic                                
                   ink with the content; (2) transforms the electronic ink; and (3) outputs the                                     
                   transformed electronic ink [brief, page 30].  The examiner essentially reiterates                                
                   the arguments made with respect to claim 2, but adds that the limitation calling                                 
                   for outputting transformed electronic ink is fully met by Morishita’s displaying the                             
                   ink on a display device [answer, page 16].                                                                       


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