Appeal No. 2006-3038
Application No. 09/750,288
claimed association step must meet this condition. Since claim 8 particularly
points out and distinctly claims the invention, we will not sustain the examiner’s
indefiniteness rejection of this claim.
We next consider the examiner’s rejection of claims 2, 7, 8, and 27-29
under 35 U.S.C. § 102(e) as being anticipated by Morishita. The examiner has
indicated how the claimed invention is deemed to be fully met by the disclosure
of Morishita [answer, pages 4 and 5]. Regarding claim 2, appellants argue that
Morishita does not disclose classifying the electronic ink, but rather merely allows
the user to designate search regions within electronic ink [brief, pages 10 and
12]. Appellants also argue that Morishita does not disclose classifying electronic
ink as embedded or overlaid ink [brief, page 13]. The examiner responds that
the limitation calling for “classifying electronic ink” is fully met by Morishita’s
handwriting and erasing modes. The examiner further notes that the erasing
mode shown in Fig. 31B fully meets “overlaid ink” as claimed [answer, pages 10,
12, and 13].
We will sustain the examiner’s anticipation rejection of claim 2. In our
view, selecting the erasing mode1 -- a mode distinct from the writing mode --
effectively “classifies” that type of electronic ink as ink that erases. In this regard,
we agree with the examiner that “classifying electronic ink” is fully met by
Morishita’s recognition that electronic ink can be used in different modes (i.e.,
writing or erasing) [see answer, page 10]. Furthermore, the electronic ink of
1 See Morishita, Figs. 31A-C and col. 20, line 20 – col. 21, line 5.
5
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