Ex Parte Shwarts et al - Page 15



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

                           35. Also, on February 19, 1997, Appellants After Final Amendment                                         
                   was entered as a Preliminary Amendment (“the Preliminary Amendment”)                                             
                   in newly filed original Application 08/801,251.                                                                  
                           36. The Preliminary Amendment amended independent claim 19.                                              
                   Dependent claim 20 was canceled.  Amended claim 19 is reproduced below                                           
                   (matter underlined added and matter in [brackets] deleted by the After Final                                     
                   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; and                                                            
                                  hiding all handwriting and associated text written with said                                      
                           pointer on the current page when the mark-up button is re-selected.                                      
                           37. After entry of the Preliminary Amendment, the application                                            
                   claims were 19 and 21-23.                                                                                        
                           38. In the Preliminary Amendment, Appellants presented                                                   
                   arguments with respect to the patentability of amended claim 19.                                                 
                   (Preliminary Amendment 2-5).                                                                                     


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