Ex parte DOUGLAS - Page 5




          Appeal No. 1996-3750                                                        
          Application No. 08/321,058                                                  


               With regard to claims 3 and 15, these claims further                   
          limit the step and means for aligning the annotation with the               
          selected location to “moving a portion of said annotation to a              
          next page.”  While the applied references are all directed to               
          making annotations in a word processing document, none of                   
          these references discloses or suggests “moving a portion of                 
          said annotation to a next page” in keeping the annotation                   
          aligned with the selected portion of the body of the word                   
          processing object.                                                          
               The examiner contends that since Cassorla mentions that                
          the annotations are “strongly bound” to the structure relative              
          to which the annotation is positioned [column 3, lines 46-49],              
          movement of the annotation to a next page “would have further               
          indicated the bounded nature of the annotation with the                     
          associated text” [answer-page 4].  We disagree.  We find no                 
          nexus between Cassorla’s recitation of annotations being                    
          “strongly bound” to a structure and the examiner’s conclusion               
          that this would have led the artisan to provide for “moving a               
          portion of said annotation to a next page,” as recited in                   
          claims 3 and 15.  The examiner has provided absolutely no                   
          evidence of a suggestion by the applied references to split an              
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