Appeal No. 97-0191
Application 08/331,151
assertion that the Figures 11A-11I illustrations in Sklarew relied on by the Examiner disclose that the
handwritten ink strokes are not grouped together with text words into paragraphs. It is only after the
handwritten words are recognized in Sklarew that they are grouped into the existing paragraphs and
then only in text form with the handwritten strokes no longer appearing on the display. Since the
claimed feature of displaying formatted paragraphs having contiguous handwritten and text words in the
same paragraph is not disclosed in Sklarew, it is our opinion that the Examiner’s 35 U.S.C. § 102(b)
rejection is not well founded.
We find the Examiner’s reasoning deficient as well with respect to independent claim 15 which
is directed to the feature of replacing existing words and/or inserting words into a displayed paragraph.
In the responsive arguments portion at pages 15 and 16 of the Answer, the Examiner asserts that
Figures 11A-11I, 12, and 13 and the accompanying description in Sklarew disclose the intersecting
and overlapping bounding box features as claimed. We do not agree. To the extent that any bounding
box feature can be construed to exist in Sklarew, we can find no teaching or suggestion of any
determination as to replacing or inserting words dependent on the extent of overlapping of such
bounding boxes with the bounding boxes of existing words as claimed.
In view of the above discussion, we cannot sustain the Examiner’s 35 U.S.C. § 102(b)
rejection of independent claims 1, 15, 25, and 31, nor of claims 2-4, 7-10, 16-24, 26-30, and 32-35
which depend therefrom.
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