Ex parte CHIANG - Page 21




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

          allows the user to display and select from that list.  The top              
          ranked candidate word can be designated to replace the                      
          selected text.  Thus, Capps discloses the ranking and                       
          designation limitations of claim 7.  Capps allows the selected              
          text string on the screen to be corrected using a correction                
          gesture and a menu of candidate text strings as recited in                  
          claims 8 and 9.  It would have been obvious to apply the                    
          correction technique of Capps to the pen-based computer of                  
          Sklarew because both deal with handwriting recognition in a                 
          pen-based computer.  The combination of Sklarew, Kato, and                  
          Capps establishes a prima facie case of obviousness with                    
          respect to claims 8 and 9 and 16-18.                                        
               Appellant argues that in Capps "both the handwritten text              
          and the listed candidates for recognition are from the same                 
          text domain" (Br18).  We conclude that handwriting symbols and              
          computer font symbols are broadly from different "text                      
          domains," as discussed in connection with claim 1.  Hence, we               
          conclude that Appellant has failed to rebut the prima facie                 






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