Appeal No. 2006-3038
Application No. 09/750,288
particular art would have suggested to one of ordinary skill in the art the
obviousness of the invention as set forth in claims 1, 5, 6, 9-15, 18-26, and 30.
We reach the opposite conclusion, however, with respect to claims 3, 4, 16, and
17. Accordingly, we affirm-in-part.
We first consider the examiner’s rejection of claim 8 under 35 U.S.C.
§ 112, second paragraph. The examiner indicates that the limitation calling for
maintaining the relationship of the electronic ink to the at least one object
“despite re-flowing of said displayed information by a layout engine” is unclear
because the term “despite” does not clarify whether re-flowing occurs or not
[answer, pages 3, 14, and 15]. Appellants respond that the re-flow concept is
supported by at least Figs. 14-16 and pages 26-28 of the present application.
Appellants note that the disclosure clearly teaches re-flowing the displayed
information and maintaining the relationship between the electronic ink and the at
least one object [brief, pages 21 and 22].
We agree with appellants. In light of the specification, the skilled artisan
would reasonably understand that the term “despite” as claimed indicates that
the claimed relationship is maintained during or after re-flowing of the displayed
information as appellants indicate [reply brief, page 6]. The term “despite”
essentially recites a necessary condition: the association of the electronic ink
with the object(s) must ensure that the relationship between the ink and the
object(s) is maintained if the displayed information is re-flowed. In our view, the
skilled artisan would readily understand from the present disclosure that the
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