Ex parte DOUGLAS - Page 9




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


          object in Norwood, or in Cassorla or Barker for that matter,                
          as claimed.  While, it may be “well-known” that portions of                 
          documents may be separately formatted (e.g., different                      
          paragraphs in a document may have different fonts), the                     
          examiner has proffered no evidence that it would have been                  
          obvious to format an annotation separately and independently                
          of the body of a word processing object where such annotation               
          is in typed form and is located in a side margin and adjacent               
          to a selected location in the body of the word processing                   
          object.  Accordingly, we will not sustain the rejection of                  
          claims 10 and 22 under 35 U.S.C. § 103.                                     
               Claims 11 and 23 depend from claims 10 and 22,                         
          respectively.  Therefore, since we have not sustained the                   
          rejection of claims 10 and 22, we also will not sustain the                 
          rejection of claims 11 and 23 under 35 U.S.C. § 103 based on                
          the same prior art references.                                              
               Claims 12 and 24 recite that the body is segmented into                
          pages and that a plurality of annotations is located “in                    
          alternating right and left side margins on sequential pages.”               
          The examiner relies on Figure 2 of Barker showing an                        
          annotation in a left side margin and concludes therefrom that               
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