Ex Parte Keely et al - Page 15


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


                   word, line, or paragraph in a manner analogous to selection in a typed-text                                      
                   system [Wilcox, col. 2, lines 16-23].  In our view, the graphical objects shown in                               
                   Figs. 3, 8, and 9 of Wilcox reasonably comprise, among other things, in-line                                     
                   words, paragraphs, sketches, margin notes, and connectors.  Moreover, multiple                                   
                   graphical objects are clustered based, at least in part, on distance between the                                 
                   graphical objects [Wilcox, abstract and col. 2, lines 27-33].  Based on this                                     
                   teaching along with the collective teachings of the other cited references, we                                   
                   agree with the examiner that the skilled artisan would have been motivated to                                    
                   classify the ink in the manner claimed to more accurately edit documents with                                    
                   handwritten elements.  The examiner’s obviousness rejection of claims 9-13 and                                   
                   22-26 is therefore sustained.                                                                                    
                           We next consider the examiner’s rejection of claim 30 as being                                           
                   unpatentable over Morishita in view of Maxted and further in view of Huang.  The                                 
                   examiner indicates that although Morishita discloses a chain of strokes, the                                     
                   reference does not associate a center of the chain of strokes with at least one                                  
                   object as claimed.  The examiner cites Huang as teaching a conformation                                          
                   process that centers individual highlighting strokes on their associated text line.                              
                   The examiner concludes that it would have been obvious to one of ordinary skill                                  
                   in the art at the time of the invention to provide such a feature in Morishita’s                                 
                   device to adapt the device to a particular user’s writing style [answer, page 9].                                
                   Appellant contends that Huang adds nothing pertinent to Morishita and the                                        
                   references fail to teach or suggest the claimed features [brief, page 32].                                       


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