Ex Parte Shwarts et al - Page 16



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

                           39. Appellants’ amendments and/or arguments (see below)                                                  
                   addressed at least the following limitations of Appellants’ amended                                              
                   claim 19:                                                                                                        
                           (A) hiding all handwriting and associated text written with said                                         
                                  pointer on the current page when the mark-up button is                                            
                                  re-selected.                                                                                      
                           Limitation (A) was added to claim 19 by the Preliminary Amendment.                                       
                           40. In the Preliminary Amendment at page 4, Appellants reiterated                                        
                   and added to arguments made in the First Amendment (August 5, 1996).                                             
                   In-part Appellants re-argued and added the following as to the amended                                           
                   claims:                                                                                                          
                                  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 [whether as user script or font                                            
                                  text] from the very time it is entered, regardless of any                                         
                                  selection of a mark-up button.                                                                    
                   The argument directly above addressed Finding of Fact 27 limitation (1)                                          
                   found in Appellants’ original claim 19, and Finding of Fact 39 limitation (A)                                    
                   found in Appellants’ amended claim 19.                                                                           
                           41. On June 14, 2000, a Notice of Allowability was mailed which                                          
                   stated that pending claims 19 and 21-23 were allowed.                                                            
                           42. Consistent with Office practice, application claims 19 and                                           
                   21-23 were renumbered as patent claims 1-4, respectively, in the course of                                       
                   preparing the original application for issue.                                                                    


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