Ex Parte Shwarts et al - Page 14



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

                           31. On January 8, 1997, the Examiner conducted an interview with                                         
                   Appellants’ representative.  On January 8, 1997, the Examiner entered an                                         
                   Interview Summary into the record stating:                                                                       
                           Claims discussed: 19, 20                                                                                 
                           Prior art discussed: Friend et al. (‘901) – shows toggling between                                       
                           entered strokes and font-rendered translation.                                                           
                           Description of agreement or other comments: Applicant stressed that                                      
                           the claimed “mark-up button” has the capability of completely                                            
                           removing entered text, in any form,* as in claim 20.  The Examiner                                       
                           noted that claims presented so as to have such interpretation would                                      
                           require significant new consideration after final but may overcome the                                   
                           outstanding rejection.                                                                                   
                                  * not positively recited, current claim 20 – text can be                                          
                                  alternate form.                                                                                   
                           32. On January 13, 1997, Appellants filed an After Final                                                 
                   Amendment (“the After Final Amendment”) responding to the Examiner's                                             
                   Final Office Action.                                                                                             
                           33. On January 21, 1997, the Examiner entered an Advisory Action                                         
                   (“Advisory Action”) denying entry of the After Final Amendment as they at                                        
                   least in-part “raise new issues that would require further consideration                                         
                   and/or search.”                                                                                                  
                           34. On February 19, 1997, Appellants filed original Application                                          
                   08/801,251, as a continuation (File Wrapper Continuing Procedure) of first                                       
                   divisional Application 08/454,061, which was abandoned.                                                          



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