Ex Parte Chastain et al - Page 3




               Appeal No. 2006-1829                                                                                                  
               Application No. 09/921,020                                                                                            


               column 5, lines 9 through 13).  The user’s selected text of interest in the electronic book is                        
               maintained in a user profile file 516 (Figure 5; column 5, lines 16 and 17).  The user profile file                   
               516 is connected to an annotation agent 508 that includes a text processing stage 510, a content                      
               recognition stage 512 and a formatting stage 514 (Figure 5).  The content recognition stage 512                       
               includes an annotation tag stage 622 that adds annotation tags to the user’s selected text of                         
               interest (Figure 6B; column 4, lines 62 through 65; column 5, lines 36 through 40).  Graham                           
               states (column 5, lines 40 and 41) “these annotation tags are compatible with the HTML format,”                       
               and in the HTML document 1000, the relevant text of interest to the user 504 “is preceded by an                       
               a [sic] <RH.ANOH.S . . . > tag 1002 and followed by an </RH.ANOH.S> tag 1004” (Figure 10;                             
               column 8, lines 13 through 17).  The HTML formatted tags as well as the Postscript formatted                          
               tags are in well-known formats used to send documents over the Internet (column 5, lines 40                           
               through 43; column 8, lines 13 through 17).  In response to receiving the user’s input (i.e., the                     
               HTML or Postscript formatted tags), the browser 506 in Graham automatically searches the                              
               Internet for at least one document relevant to the selected (i.e., tagged) text of interest (Figure                   
               6B; column 7, lines 48 through 55).                                                                                   
                       Appellants’ arguments (brief, pages 12 through 23; reply brief, pages 4 through 6) to the                     
               contrary notwithstanding, Graham describes all of the claimed steps and structure set forth in                        
               claims 1 through 6, 9 through 11, 13 through 16 and 18 through 21.  Thus, the anticipation                            
               rejection of claims 1 through 6, 9 through 11, 13 through 16 and 18 through 21 is sustained.                          
                       The anticipation rejection of claims 7 and 12 is sustained because the notated passage of                     

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