Ex Parte Sellen et al - Page 8




         Appeal No. 2006-1766                                                       
         Application No. 09/773,090                                                 
                                                                                   
         Kashiwagi), not a “second screen,” as claimed.                             
              We agree with appellants’ observation, at pages 4-5 of the            
         reply brief:                                                               
                   Both of the Karidis…and Kashiwagi…patents are directed           
              toward apparatuses that enable a user to provide input in             
              written form, for insertion into a document.  In the                  
              Karidis…patent, the user provides input via markable surface          
              150.  In the Kashiwagi…patent, the user provides input via            
              tablet 66.  Both of the Karidis…and Kashiwagi…patents fully           
              provide for the receipt and processing of input from the              
              user.  Neither of the Karidis…patent nor the Kashiwagi…               
              patent have any apparent need for another screen upon which           
              text may be displayed, with which the user can interact.              
              Thus, neither of the Karidis…patent nor the Kashiwagi…patent          
              provides any motive for a second screen upon which text may           
              be displayed, and a second manual actuator by means of which          
              a user is able to interact with text displayed on the second          
              screen, as recited in claim 1 (emphasis in the original).             
              Thus, appellants conclude that there would have been no               
         motive for the cited combination, and we agree.                            





              Accordingly, the rejection of claims 1-8 and 10-18 under 35           
         U.S.C. § 103 is reversed.                                                  
              Since Robotham does not provide for the deficiencies of the           
         two primary references, Robotham being relied on for a specific            
         type of connection, we also will not sustain the rejection of              
         claim 9 under 35 U.S.C. § 103.                                             



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