Ex Parte Shwarts et al - Page 7



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

                                      B.  The Inventions of the Reissue Application                                                 
                           3.     The inventions claimed in the reissue application on appeal are                                   
                   directed to function “(4) accepting handwritten information on pages of the                                      
                   book” (reissue claims 1-4) and function “(3) finding character strings located                                   
                   within the book” (reissue claims 5-101).                                                                         
                           4.     Appellants state that “[i]n contrast [to originally filed claim 19],                              
                   reissue independent claims 5, 27, 49, and 77 are directed to the display of                                      
                   electronic book contents associated with user input search strings . . .”                                        
                   (Br. 10:1-2).                                                                                                    

                              C.  Prosecution history of the co-pending grandparent and                                             
                                               second divisional applications                                                       
                           5.     The patent sought to be reissued is based on Application                                          
                   08/801,251 (which we refer to as the “original application” even though it is                                    
                   the third application in the sequence), filed February 19, 1997, which is a                                      
                   continuation of Application 08/454,061(which we refer to as the “first                                           
                   divisional”), filed May 30, 1995, now abandoned, which is a first divisional                                     
                   of 08/147,143, (which we refer to as the “grandparent”), filed November 3,                                       
                   1993, now U.S. Patent 6,243,071.                                                                                 
                           6.     Co-pending Application 08/454,423, (which we refer to as the                                      
                   “second divisional”) was also filed May 30, 1995, now U.S. Patent                                                
                   5,802,516, as a second divisional of grandparent application 08/147,143.                                         




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