Ex parte CHIANG - Page 14




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

          Kato as a selective conversion system on a pen-based computer               
          as taught by Sklarew.  It appears from our reading of the                   
          rejection that the Examiner has found a pen-based computer and              
          a kana/kanji conversion system and combined the teachings                   
          based on Appellant's disclosure rather than a teaching in the               
          prior art.  While we do not find the motivation to combine                  
          Kato, we consider Sklarew alone sufficient to establish a                   
          prima facie case of obviousness.                                            
               The Examiner states that Appellant's arguments have been               
          addressed in the statement of the rejection (EA27).  However,               
          the statement of the rejection repeats the rejection from the               
          Final Rejection (apparently verbatim) and does not                          
          specifically address the arguments.  This is not helpful to                 
          Appellant or to this panel in trying to decide the merits of                
          the rejections.                                                             
               Appellant argues that "to the extent that Sklarew's                    
          handwriting recognition might be characterized as a                         
          'conversion,' that conversion is not initiated by the user                  
          with any type of gesture" (Br15) because "the handwriting                   
          recognition process is executed automatically without the aid               
          of a gesture or any other user intervention (see column 10,                 

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