Ex parte CHIANG - Page 13




          Appeal No. 97-0642                                                          
          Application 08/242,318                                                      

          selection.  We conclude that it would have been obvious to use              
          a gesture to initiate the conversion process in Sklarew                     
          instead of a softkey selection.  The source text domain in                  
          Sklarew is predetermined to be the set of handwritten symbols               
          and the destination text domain to which the selected text is               
          to be converted is the computer text font symbol set.  Claim 1              
          does not require automatic determination of a source text                   
          domain and an appropriate destination text domain from several              
          choices.  The selected handwritten text is converted                        
          (figures 12E and 12F) and replaced on the screen (figure 12G).              
          Therefore, Sklarew establishes a prima facie case of                        
          obviousness.                                                                
               The Examiner applies Kato to show kana/kanji text domain               
          conversion of the type disclosed by Appellant.  The Examiner                
          considers the motivation to combine Sklarew and Kato to be the              
          fact that both deal with conversions (EA.).  We do not                      
          consider this generalization to be sufficient motivation for                
          one of ordinary skill in the art to apply the handwriting                   
          entry system of Sklarew to a symbology conversion system as                 
          taught by Kato, or, alternatively, to implement the automatic               
          symbology conversion system used in full text searching in                  

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