Appeal No. 1997-1665 Page 14
Application No. 08/289,134
based on features of the coordinate data representing the ink
object I. We are persuaded that these teaching would have
suggested the limitations of "in response to said feature
portion of said coordinate data, a preselected command is
performed to change a display condition of said line segment
or said character."
Fourth, the appellants argue, "there can be no motivation
or suggestion to make the combination of prior art teachings
suggested by the Examiner." (Appeal Br. at 17.) The prior
art belies the argument. “‘[T]he question is whether there is
something in the prior art as a whole to suggest the
desirability, and thus the obviousness, of making the
combination.’” In re Beattie, 974 F.2d 1309, 1311-12, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992) (quoting Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984)).
Here, Capps invites the use of known handwriting
recognizers. Specifically, "any number of commercially
available word recognition systems can be used to convert an
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