Ex Parte Van Gestel et al - Page 4

               Appeal 2007-0608                                                                           
               Application 09/738,647                                                                     
               contends that the combination of Shojima and Cok teaches the cited claimed                 
               limitation as a mechanism for improving the user’s input handwriting by                    
               combining a digitized picture of said handwriting with a corresponding                     
               normative handwritten font.  Therefore, the Examiner concludes that it                     
               would have been obvious to combine Shojima and Cok to yield the                            
               invention as recited in claims 3, 83 and 13 through 16.  (Answer 6 and 8).                 
               We affirm in part.                                                                         

                                                     ISSUES                                               
               The pivotal issues in the appeal before us are as follows:                                 
               (1) Have Appellants shown that the Examiner has failed to establish that                   
                   one of ordinary skill in the art, at time of the present invention, would              
                   have found that the disclosure of Shojima renders the claimed invention                
                   unpatentable under 35 U.S.C. § 103(a), when Shojima teaches                            
                   comparing an input handwritten character data with a registered data                   
                   dictionary to recognize a most similar pattern, as well as to select and               
                   display a font corresponding to the recognized character pattern?                      
               (2)  Have Appellants shown that the Examiner has failed to establish that                  
                    one of ordinary skill in the art, at the time of the present invention,               
                    would have found that the combined disclosures of Shojima and Cok                     
                    render the claimed invention unpatentable under 35 U.S.C. § 103(a)                    
                    when Cok teaches a mechanism for improving the handwriting sample                     
                    of a user?                                                                            

                                                                                                         
               3 We note that the Examiner rejected claim 8 over Shojima alone.  We will                  
               enter infra a new ground of rejection against claim 8 as being unpatentable                
               over Shojima and Cok.                                                                      
                                                    4                                                     

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