Ex parte CHIANG - Page 22




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

          case and the rejection of claims 8, 9, and 16-18 is                         
          sustained.4                                                                 


                    Claim 10                                                          
               The separate patentability of claim 10 has not been                    
          argued.  Thus, claim 10 falls with claim 1.  We note, however,              
          that Capps teaches initiating a correction function using a                 
          conversion gesture (a double tap of the stylus on the screen)               
          within a bounding box of the word object (col. 7,                           
          lines 62-65)).  The rejection of claim 10 is sustained.                     

               Issue D:  Claims 21-23                                                 
               The Examiner has not established a prima facie case of                 
          obviousness with respect to claim 21.  As discussed in                      
          connection with claim 1, we find no motivation in the record                
          established by the Examiner to combine the automatic symbology              
          conversion system of Kato with a pen-based handwriting                      
          recognition device as taught in Sklarew.  Capps discloses a                 


            Since claim 7 has not been rejected over the4                                                                      
          combination including Capps, we have the somewhat unusual                   
          circumstance of the rejection of dependent claims 8 and 9                   
          being affirmed (with an additional reference) and the                       
          rejection of the parent claim 7 being reversed.                             
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