Ex parte Hirayama

Board of Patent Appeals and Interferences

Aug 31, 1999

08229058 (B.P.A.I. Aug. 31, 1999)

Application for patent filed April 18, 1994. According1
to appellant, this application is a continuation of
Application 07/824,207, filed January 22, 1992.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TOMOSHI HIRAYAMA
____________
Appeal No. 1996-1275
Application No. 08/229,0581
____________
ON BRIEF
____________
Before KRASS, FLEMING, and HECKER, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1996-1275 Page 2
Application No. 08/229,058
This is a decision on appeal from the final rejection of
claims 1 through 10, all of the claims pending in the
application.
The invention is directed to an apparatus for inputting
handwritten information. Reference is made to representative
independent claim 1, reproduced as follows, for an
understanding of the instant invention:
1. A handwritten information input apparatus comprising:
a pen for inputting character information by handwriting;
a tablet traceable by said pen and adapted for detection
of the trace information inputted by said pen;
a display unit provided under said tablet for displaying
an image visibly through said tablet;
a first area defined on said tablet for inputting the
trace information by said pen;
a first area of said display unit superimposed with said
first area of said tablet displaying characters generated by
pattern recognition of trace information written in said first
area of said tablet;
a second area defined on said display unit for displaying,
in response to operation of a control key, characters written
in said first area and for erasing, in response to operation of
said control key, said characters from said first area of said
display unit;
Appeal No. 1996-1275 Page 3
Application No. 08/229,058
and a controller for displaying a desired character in
said first area on said display unit copied from said second
area when said pen is dragged on a portion of said tablet
corresponding to said desired character displayed in said
second area.
The examiner relies on the following references:
Kuzunuki et al. (Kuzunuki) 4,860,372 Aug. 22,
1989
Sklarew 4,972,496 Nov. 20,
1990
Claims 1 through 10 stand rejected under 35 U.S.C. 103 as
unpatentable over Sklarew in view of Kuzunuki.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
We reverse.
We agree with the examiner’s analysis of Sklarew as it
applies to the instant independent claims up to a point. That
is, it is clear that Sklarew discloses a handwritten
Appeal No. 1996-1275 Page 4
Application No. 08/229,058
information input apparatus that comprises a pen for inputting
character information by handwriting and a tablet traceable by
the pen. Sklarew also discloses a display under the tablet for
displaying an image visibly through the tablet. As pointed out
by the examiner, with reference to Sklarew’s figures 12 A-G,
the claimed first area for inputting the trace information by
the pen is shown, for example, in Figure 12C wherein “98" is
handwritten on the line in the window. Further, as indicated
by the examiner, the claimed “first area of said display unit
superimposed with said first area of said tablet...” may be
read as the black area, shown in Figure 12E, for example, where
a character “98" is shown inserted based on the handwritten
“98" and recognized as such by pattern recognition. Also, the
claimed “second area” may be the area shown in Figure 12C, for
example, wherein “0.0" is shown and then replaced by “98" in
Figure 12G after touching the “insert” block.
However, while the examiner urges that the last part of
independent claim 1, limitations which appear in the other
independent claims, is also disclosed by Sklarew, it is here
that we disagree with the examiner.
Appeal No. 1996-1275 Page 5
Application No. 08/229,058
Appellant argues, at page 4 of the principal brief, that
the handwritten characters in Sklarew do not appear in the same
area in which they are entered by handwriting, appearing,
instead, in a separate box.

With regard to the handwritten characters appearing in the
same area in which they are entered by handwriting, it is
unclear what language in claim 1 describes this. In any event,
while “98" arguably appears in a separate box above the
handwritten”98" in Figures 12E and F of Sklarew, it is not
unreasonable, in our view, to hold that both of these
characters are “in the same area” as they both appear in the
window opened up by touching the pen to the desired spot for
entering data. Thus, we do not find this argument by appellant
to be persuasive.
However, when it comes to the “controller for
displaying...” language of the claims, we find ourselves in
agreement with appellant that this is not suggested by Sklarew
and the addition of Kuzunuki does not remedy the deficiency of
Sklarew in this regard.
Appeal No. 1996-1275 Page 6
Application No. 08/229,058
Applying Sklarew to the instant claim language, keeping in
mind the examiner’s interpretation of the “first area,” the
“first area of said display unit” and the “second area” as it
relates to Sklarew, we proceed as follows:
What is required is a “controller for displaying a desired
character in said first area on said display...” That is,
Sklarew must display a character in the handwritten area, on
the line in the window shown in figures 12A-G. Perhaps one
could say that the handwritten “98" is such a desired
character. However, the claim goes on to require that this
desired character appearing in the first area of the display
must be “copied from said second area when said pen is dragged
on a portion of said tablet...” It is clear that this would
require touching the pen to the displayed “98" shown in
Sklarew’s Figure 12G and dragging the “98" character back to
the line in the window of Figure 12C, for example. Clearly,
Sklarew does not move characters in this manner or in this
direction. Thus, while Sklarew’s device permits movement of
characters from the window to the final destination to be
displayed on the spread sheet, Sklarew does not contemplate
Appeal No. 1996-1275 Page 7
Application No. 08/229,058
moving in the other direction, dragging the character in the
spread sheet back to the window in which characters are
handwritten.
Appeal No. 1996-1275 Page 8
Application No. 08/229,058
Accordingly, we will not sustain the rejection of claims 1
through 10 under 35 U.S.C. 103.
The examiner’s decision is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
EAK/jlb
Appeal No. 1996-1275 Page 9
Application No. 08/229,058
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