Appeal No. 2006-3038
Application No. 09/750,288
Our previous discussion of the searching feature of Morishita applies equally
here and we incorporate that discussion by reference.8
We next consider the examiner’s rejection of claims 9-13 and 22-26 under
35 U.S.C. § 103(a) as being unpatentable over Morishita in view of Maxted and
further in view of Wilcox. The examiner indicates that Morishita and Maxted
disclose all of the claimed subject matter except for classifying the electronic ink
as in-line words, text marks, in-line paragraphs and sketches, margin notes, or as
a connector. The examiner cites Wilcox as teaching such features and
concludes that it would have been obvious to one of ordinary skill in the art at the
time of the invention to include such features in the prior art system to, among
other things, provide an accurate selection technique for graphical editing
[answer, pages 8 and 9].
Appellants argue that Wilcox does not disclose the various classifications
recited in claims 9-13 and 22-26 [brief, pages 24-30]. Appellants further argue
that the examiner failed to establish a reason why the skilled artisan would
combine the cited prior art [brief, page 25]. The examiner responds that Wilcox
not only discloses the claimed limitations, the reference also provides the
motivation to combine [answer, page 16].
We will sustain the examiner’s rejection. Wilcox discloses a technique
that dynamically groups multiple graphical objects (e.g., digital ink) such as
drawings or non-text notes. In particular, the graphical objects are selected by
8 See id.
14
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