Ex Parte Shwarts et al - Page 11



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

                   claims 24-30 of the grandparent), directed to searching through data                                             
                   according to a character string selected by pointer interaction.                                                 
                           14. Grandparent application 08/147,143 ultimately issued as                                              
                   U.S. Patent 6,243,071, on June 5, 2001.                                                                          
                           15. The second divisional application ultimately issued as                                               
                   U.S. Patent 5,802,516, on September 1, 1998.                                                                     

                     D.  Prosecution history of the first divisional and “original” applications                                    
                           16. Simultaneously with the second divisional, Appellants filed a                                        
                   first divisional Application 08/454,061 to prosecute the invention of                                            
                   group II, claims 19-23 (identical to claims 19-23 of the grandparent),                                           
                   directed to recognizing/digitizing hand writing in an electronic book                                            
                   mark-up operation.                                                                                               
                           17. On April 1, 1996, the Examiner entered a Non-Final Office                                            
                   Action (“Non-Final Action”).                                                                                     
                           18. Claims 19-23 were rejected on various grounds.                                                       
                           19. The prior art relied upon by the Examiner in rejecting the                                           
                   claims was:                                                                                                      
                           Norwood                        US 5,063,600           Nov. 5, 1991                                       
                           Friend                        US 5,455,901           Oct. 3, 1995                                       
                           Dickinson                      US 5,500,929           Mar. 19, 1996                                      
                           20. Claims 20 and 23 were rejected under 35 U.S.C. § 112, second                                         
                   paragraph, as being indefinite.                                                                                  


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