Appeal No. 1996-3750
Application No. 08/321,058
disclosure since there is no indication in the four corners of
any of the references of the limitation set forth in claims 5
and 17. Accordingly, we will not sustain the rejection of
claims 5 and 17 under 35 U.S.C.
§ 103.
We turn, now, to claims 10 and 22. These claims call for
“formatting said annotation independently of said body and
providing said word processing object to said output means
with said formatted annotation.” In order to provide for this
limitation, the examiner relies on Norwood’s disclosure, at
column 12, lines 5-10, that a user “may not annotate
throughout the body of the text but may write notations above
and aside the text window.” The examiner concludes from this
that the annotated note in Norwood is formatted independently.
The examiner also contends [answer-page 11] that “it is well-
known in the art that portions of documents may be separately
formatted...” We do not consider the handwritten notations in
Norwood to be “formatting,” as claimed, since formatting
requires the ability to change things such as fonts, line
spacing, line density, etc. There is no formatting of an
annotation independent of the body of the word processing
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