Ex Parte Shwarts et al - Page 10



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

                                  25. A method of claim 24 wherein the step of selecting a                                          
                           character string by interaction of the pointer with the display screen                                   
                           includes the following substeps:                                                                         
                                  displaying a find dialog box on the display screen, the dialog                                    
                           box having a field for accepting handwriting; and                                                        
                                  recognizing handwriting written in the field as the character                                     
                           string.                                                                                                  
                           9.     On May 19, 1995, the Examiner entered a Non-Final Office                                          
                   Action which included a “restriction requirement” and documented                                                 
                   Appellants’ “provisional election” with traverse made in a telephone                                             
                   conversation with the Examiner on May 1, 1995.                                                                   
                           10. The restriction requirement indicated that grandparent                                               
                   application 08/147,143 contained three independent and distinct inventions                                       
                   as follows:                                                                                                      
                                  I. Claims 1-18 and 31-38 drawn to a graphical user interface for                                  
                                  use with an electronic book;                                                                      
                                  II. Claims 19-23 drawn to a method of recognizing/digitizing                                      
                                  hand writing; and                                                                                 
                                  III. Claims 24-30 drawn to a method of searching through data                                     
                                  according to a character string.                                                                  
                           11. Appellants’ provisional election with traverse elected to                                            
                   prosecute the invention of group I, claims 1-18 and 31-38.                                                       
                           12. Appellants failed to perfect the traversal.                                                          
                           13. Instead, Appellants filed a second divisional Application                                            
                   08/454,423 to prosecute the invention of group III, claims 24-30 (identical to                                   



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