Ex parte CHIANG - Page 24




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

               Appellant argues that "it appears that the Horodeck                    
          reference adds nothing of relevance beyond that described in                
          the Kato et al. reference" (Br23).  We disagree.  Kato is                   
          directed to automatic symbology conversion used in full text                
          searching and has no teaching of a user manually designating                
          text to be converted from one text domain to another.  As a                 
          consequence, we found no motivation for one of ordinary skill               
          in the art to adapt this automatic conversion in a search                   
          method to a pen-based computer such as Sklarew.  Horodeck,                  
          however, discloses a computer with a keyboard for performing                
          text domain conversions wherein delimiters are inserted by the              
          operator to designate portions of text to be converted from                 
          one text domain to another.  The computer responds to the pair              
          of delimiting signals to convert from kana to kanji (e.g.,                  
          col. 15, lines 33-45).  Horodeck also discloses that a list                 
          (i.e., menu) of numbered choices is displayed in the assembly               
          portion of the cathode ray tube when the kana/kanji conversion              
          results in ambiguities (e.g., col. 15 under heading "MANUAL                 
          RESOLUTION OF AMBIGUITIES").  Therefore, Horodeck discloses                 
          manually selecting text to be converted, determining the                    
          appropriate destination text domain, displaying a list of                   

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