Ex Parte Shwarts et al - Page 51



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

                           V. DISCUSSION –  REJECTION UNDER 35 U.S.C. § 103                                                         
                                                        A.  Introduction                                                            
                           In the Brief at page 3, Appellants state:                                                                
                           The invention “provides an efficient method for searching or ‘finding’                                   
                           character strings within a document [e.g., an electronic book].                                          
                           Preferably, this is accomplished by first displaying a dialog box                                        
                           having a find field. Handwritten information written within the find                                     
                           field is then recognized as a character string,” See col. 3, lines                                       
                           24-28; col. 16, lines 55-57, col. 21, line 15 to col. 24, line 21; and                                   
                           FIGS. 10 (elements 218 and 219) and 25-28.                                                               
                           The statement directly above and Appellants’ Specification indicate a                                    
                   two part process where first a find button is selected to open a find dialog                                     
                   box, and after a user writes in a search string, the system recognizes the                                       
                   search string as text.  Although the Examiner and Appellants are silent as to                                    
                   their claim interpretations on this point, our review of the Examiner’s                                          
                   rejection and Appellants’ Briefs finds that each is consistent with                                              
                   Appellants’ disclosed two part process.                                                                          

                                                   B. Claim Interpretation                                                          
                           In the brief at page 3, Appellants state:                                                                
                                  Pending reissue independent claims 5, 27, 49 and 77 are                                           
                           directed generally to receiving handwritten user input, recognizing                                      
                           this input as one or more search stings and displaying electronic book                                   
                           content associated with the search string.                                                               
                           We interpret the language of claims 5, 27, 49, and 77, quite differently                                 
                   than has apparently been done by the Examiner and Appellants.  In                                                

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