Appeal No. 2006-3038
Application No. 09/750,288
We will sustain the examiner’s rejection of claims 27 and 28. In our view,
the eraser embodiment shown in Figs. 31A-C and described in col. 20, line 20 –
col. 21, line 5 fully meets the claims. As we indicated previously, electronic ink
for erasing is effectively classified as such.3 We further note that erasing the
selected portions of the image via overlaid electronic ink fully meets transforming
the ink. Moreover, displaying the image after erasing fully meets outputting the
transformed electronic ink (i.e., to a display). Since all limitations of claims 27
and 28 are disclosed by Morishita, the examiner’s rejection of those claims is
therefore sustained.
Regarding claim 29, appellants argue that Morishita does not disclose
embedded ink that occupies an in-line flow of at least one object as claimed
[brief, page 31]. Claim 29, however, depends from independent claim 2 which
recites embedded ink as an alternative to overlaid ink.4 Although claim 29 further
narrows the embedded ink limitation, it has no effect on the alternative directed to
overlaid ink. As a result, our previous discussion regarding overlaid ink applies
equally here and we incorporate that discussion by reference.5 Therefore, the
examiner’s anticipation rejection of claim 29 is sustained.
We next consider the examiner’s rejection of claims 1, 3-6, and 14-21
under 35 U.S.C. § 103(a) as being unpatentable over Morishita in view of
Maxted. Regarding independent claims 1 and 14, the examiner's rejection
essentially finds that Morishita teaches every claimed feature except for
3 See page 5, supra, of this opinion.
4 See pages 5 and 6, supra, of this opinion.
5 See id.
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