Ex parte SHWARTS et al. - Page 22




          Appeal No. 97-1223                                        Page 22           
          Application No. 08/147,143                                                  


          aforementioned, Capps recognizes  handwriting entered into a                
          PDA.  At the time the invention was made, therefore, it would               
          have been obvious to one having ordinary skill in the art to                
          which the invention pertains to combine the handwriting                     
          recognizer of Capps with the dialog boxes of Slate and the                  
          prior art as a whole to permit entry of page numbers in                     
          handwriting to obtain the claimed invention as specified in                 
          claim 38.  The motivation to have done so would have been to                
          replace a bulky keyboard with a small stylus, which is central              
          to the ideas of a PDA.  Therefore, we find the prior art would              
          have suggested the page number dialog box and means for                     
          specifying of claim 38.                                                     


                              Rejection of Claims 32-34                               
               Relevant to claim 32, the examiner concludes it would                  
          have been obvious to define a bookmark to convey the content                
          of the marked page using text or image so that the user has a               
          better idea of the information book marked and can traverse                 
          easily to the various pages that are book marked.  (Examiner’s              
          Answer at  9.)  In response the appellants observe there is no              
          teaching in the references whatsoever directed at providing a               







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