Ex Parte Shwarts et al - Page 13



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

                           27. Appellants’ arguments (see below) addressed at least the                                             
                   following limitations of Appellants’ amended claim 19:                                                           
                           (1) displaying handwriting written on the current page of the book                                       
                                  after a mark-up button has been selected.                                                         
                           Limitation (1) was found in original claim 19.                                                           
                           28. In the First Amendment at page 3, last paragraph, Appellants                                         
                   argued the following:                                                                                            
                                  Applicants have recognized that users often desire to                                             
                                  display “clean” page unobscured by handwritten notes.                                             
                                  Thus, claim 20 recites a feature whereby the handwritten                                          
                                  notes on a given page can be hidden simply by selecting                                           
                                  the mark-up button.  Further, fresh handwriting will not                                          
                                  be displayed unless the mark-up button is first selected as                                       
                                  indicated as the third step of claim 19.  Nowhere in                                              
                                  Norwood is such control described or suggested.                                                   
                   At page 4, second paragraph, Appellants also argued the following:                                               
                                  Further, the patent to Friend et al. fails to show or suggest                                     
                                  that display of handwriting is contingent upon selection                                          
                                  of a mark-up button.  The Friend et al. system continues                                          
                                  to display handwriting from the very time it is entered,                                          
                                  regardless of any selection of a mark-up button.                                                  
                   The arguments directly above addressed Finding of Fact 27 limitation (1)                                         
                   found in Appellants’ amended and original claim 19.                                                              
                           29. On October 24, 1996, the Examiner entered a Final Office                                             
                   Action (“Final Action”).                                                                                         
                           30. Claims 19-23 were again rejected under 35 U.S.C. § 103 as                                            
                   being unpatentable over Norwood, Friend, and Dickinson.                                                          

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