Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
Dickinson, Appellants made at least one significant amendment (on
February 19, 1997) to claim 19 (Clause bridging Answer 4-5):
(A) Appellants amended rejected independent claim 1 to add
the requirement of “hiding all handwriting and associated text written
with said pointer on the current page when the mark-up button is re-
selected.”
Amended application claim 19 ultimately became patent claim 1.
51. Additionally, the Examiner based the rejection of claims 5-15,
17-37, 39-59, 61-85, and 87-101 on the grounds that when faced in the
original application with a rejection under 35 U.S.C. § 103 over Norwood,
Friend, and Dickinson, Appellants made significant arguments with respect
to amended claim 19 (Answer 5:6-13). (See also the Findings of Fact 28
and 40 supra with respect to Appellants’ arguments regarding claim
limitations (1) and (A) in Findings of Fact 27 and 39 respectively.)
52. The Examiner reasoned in part as follows (Answer 5:6-13):
[S]ignificant limitation (the toggling "mark-up button") is not
recited in the newly-presented independent reissue claims 5, 27,
49, 77, but a review of the parent application files shows that
such a limitation was specifically argued as defining over the
prior art of record, at pages 3 - 4 of the amendment filed 5
August 1996 (PTO Mail Room date) in US SN 08/454,061.
In arguing against the applicability of the applied prior
art reference Norwood (US #5,063,600), appellant asserted in
the paper of 5 August 1996 that "Norwood fails to show a
'mark-up button' which when selected can remove the display of
handwriting". In the response, appellant also attempted to
distinguish the "mark-up button" claimed over the handwriting
input system of Friend et al. (US #5,455,901). The independent
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