Ex Parte Keely et al - Page 10


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


                   classifying the electronic ink based on a shape of the ink.  The examiner cites                                  
                   Maxted as teaching such a feature and finds that it would have been obvious to                                   
                   one of ordinary skill in the art at the time of the invention to modify Morishita to                             
                   use shape as a factor in classifying the electronic ink to reduce the number of                                  
                   symbols needed [answer, pages 6 and 7].  Among other things, appellants argue                                    
                   that Maxted merely allows a user to place edit symbols in a selection window,                                    
                   and there is no reason to modify Morishita’s search region embodiment with                                       
                   Maxted’s edit symbols [brief, pages 10-11; reply brief, pages 2 and 3].  The                                     
                   examiner responds that Maxted teaches that different shapes of electronic ink                                    
                   produce different text editing functions.  According to the examiner, including                                  
                   such a feature in Morishita’s system would result in fewer strokes needed to edit                                
                   text [answer, pages 11 and 12].                                                                                  
                           We will sustain the examiner’s rejection of claims 1 and 14.  Although the                               
                   examiner’s rejection is based on obviousness, we find that both Morishita and                                    
                   Maxted actually anticipate the claims.                                                                           
                           For example, Morishita’s curved and rectangular search regions in Figs.                                  
                   44A and B fully meet the claimed classification step in that the curved region                                   
                   corresponds to “Select Mode 1,” and the rectangular region corresponds to                                        
                   “Select Mode 2” [see Morishita, col. 25, lines 42-58].   Simply put, the electronic                              
                   ink is “classified” as corresponding to Select Mode 1 or 2 based on whether it is                                
                   curved or rectangular.  Also, the ink is associated with at least one object of the                              
                   displayed information for the reasons previously discussed.                                                      


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