Ex Parte Shwarts et al - Page 3



                   Appeal 2007-0493                                                                                                 
                   Application 10/289,967                                                                                           
                   Patent 6,144,380                                                                                                 

                                  display screen, causes the action to be executed, the method                                      
                                  comprising:                                                                                       
                                          receiving hand-written user input;                                                        
                                          recognizing said user input as one or more search strings;                                
                                          searching the electronic book, including said at least one                                
                                  block, for said one or more search strings; and                                                   
                                          displaying, on the display screen, a portion of the                                       
                                  electronic book associated with at least one of the one or more                                   
                                  search strings.                                                                                   
                           4.     The Examiner rejected added reissue claims 5-15, 17-37, 39-59,                                    
                   61-85, and 87-101 under 35 U.S.C. § 251 as “being an improper recapture of                                       
                   claimed subject matter that was deliberately canceled in the application for                                     
                   the patent upon which the present reissue is based”  (Answer 4-6) .                                              
                           5.     The Examiner rejected reissue claims 1-4 (original patent                                         
                   claims 1-4) and added reissue claims 5-15, 17-37, 39-59, 61-85, and 87-101                                       
                   as being based on a defective reissue oath under 35 U.S.C. § 251                                                 
                   (Answer 6).                                                                                                      
                           6.     The prior art relied upon by the Examiner in rejecting the                                        
                   claims on appeal is:                                                                                             
                           More                   US 4,839,634                   Jun. 13, 1989                                      
                           Vertelney              US 5,341,293                   Aug. 23, 1994                                      
                           Ballard                US 5,377,281                   Dec. 27, 1994                                      
                           Dickinson              US 5,500,929                   Mar. 19, 1996                                      





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