Ex Parte Shwarts et al - Page 12



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

                           21. Claims 19-23 were rejected under 35 U.S.C. § 103 as being                                            
                   unpatentable over Norwood, Friend, and Dickinson.                                                                
                           22. On August 5, 1996, Appellants filed a first Amendment (“the                                          
                   First Amendment”) responding to the Examiner’s Non-Final Action.                                                 
                           23. The First Amendment amended independent claim 19, and                                                
                   dependent claims 20, 22, and 23.                                                                                 
                           24. Amended claims 19 and 20 reproduced below (matter                                                    
                   underlined added by the First Amendment):                                                                        
                                  19.  A method of processing handwriting written with a pointer                                    
                           on a screen display of a pointer-based computer having a processor                                       
                           connected to the screen display, a memory connected to the processor,                                    
                           a pointer, contents of an electronic book, and one or more buttons, the                                  
                           method comprising:                                                                                       
                                  displaying a view of a current page of the book on the display                                    
                           screen;                                                                                                  
                                  recognizing handwriting as one or more character strings when                                     
                           said handwriting is written in handwriting recognition fields displayed                                  
                           on the screen display, the one or more character strings being used to                                   
                           identify at least one location within the book; and                                                      
                                  displaying handwriting written on the current page of the book                                    
                           after a mark-up button has been selected.                                                                
                                  20.  The method of claim 19 wherein the handwriting written                                       
                           on the current page is removed when the mark-up button is selected.                                      
                           25. After entry of the First Amendment, the application claims                                           
                   were 19-23.                                                                                                      
                           26. In the First Amendment, Appellants presented arguments with                                          
                   respect to the patentability of amended claim 19.                                                                

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