Docket’No. ’3125-4002USI
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`Express Mail N0. EL606933364US
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UTILITY APPLICATION AND FEE TRANSMITTAL §(1.53(bn
`
`Commissioner for Patents
`
`Box Patent Application
`Washington, DC. 20231
`
`Sir:
`
`Transmitted herewith for filing is the patent application of
`
`Inventor(s) names and addresses: Keith R. McNally, San Diego, CA; William H. Roof, San
`Diego, CA; Richard Bergfeld, Chatsworth, CA
`
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS COMMUNICATIONS
`For:
`SYSTEM WITH MENU GENERATION
`
`Enclosed Are:
`
`fl
`1
`
`2Q
`Q
`é
`
`page(s) of specification
`page(s) of Abstract
`
`page(s) of claims
`IX] Formal D Informal drawings
`sheets (Figs. 1—7) of
`page(s) of Declaration and Power of Attorney
`
`E] Unsigned
`[:1 Newly Executed
`{XI Copy from prior application
`El Deletion of inventors including Signed Statement under 37 C.F.R. §1.63(d)(2)
`
`fl
`
`h
`
`
`
`Old'S‘fl96933
`
`Io/w/IIIllllllllllllIIIIHIIIIIIIIIIIIIIlllllll
`
`‘
`
`660999 v1
`
`Apple, Exhibit 1007, Page 1
`
`Apple, Exhibit 1007, Page 1
`
`

`

`we
`
`XI
`
`.
`
`f
`
`Docket No. 3125-4002USI
`
`\
`
`REQUEST AND CERTIFICATION UNDER 35 U.S.C. §122(b)(2)(B)(i) (form
`PTO/SB/35)
`As indicated on the attached Request and Certification, Applicant(s) certify that the
`invention disclosed in the attached application HAS NOT and WILL NOT be the subject of
`an application filed in another country, or under a multilateral agreement, that requires
`publication at eighteen months after filing. Applicant(s) therefore request(s) that the
`attached application NOT be published under 35 U.S.C. §122(b).
`
`K4
`
`Incorporation by Reference:
`
`E The entire disclosure of the prior application, from which a copy of the combined
`Declaration and Power of Attorney is supplied herein, is considered as being part of
`the disclosure of the accompanying application and is incorporated herein by
`reference.
`
`D Deletion of Inventors (37 CPR. §1.63(d) and §1.33(b)
`
`Signed statement attached deleting inventor(s) named in the prior application serial no.
`, filed
`
`'
`
`E]
`
`Microfiche Computer Program (Appendix)
`
`
`
`
`
`E] page(s) of Sequence Listing
`[:1 computer readable disk containing Sequence Listing
`E] Statement under 37 CPR. §1.821(i) that computer and paper copies of the Sequence
`Listing are the same
`
`E Assignment Papers (assignment cover sheet and assignment documents)
`D A check in the amount of $40.00 for recording the Assignment
`[:l Charge the Assignment Recordation Fee to Deposit Account No. 13-4500, Order
`N0.
`.
`Assignment Papers filed in the parent application Serial No. 09/400,413
`
`Certification of chain of title pursuant to 37 C.F.R. §3.73(b)
`
`Priority is claimed under 35 U.S.C. §119 for:
`Application No(s).
`, filed
`, in
`El Certified Copy of Priority Document(s) [
`E] filed herewith
`[J filed in application Serial No.
`[I English translation document(s) [
`]
`[:I filed herewith
`I: filed in application Serial No.
`
`(country).
`]
`
`, filed
`
`, filed
`
`.
`
`.
`
`El
`
`Priority is claimed under 35 U.S.C. §119(e) for:
`Provisional Application No.
`, filed
`
`660999 vl
`
`-2-
`
`Apple, Exhibit 1007, Page 2
`
`Apple, Exhibit 1007, Page 2
`
`

`

`a? ‘v
`
`.
`
`.
`
`Docket No. 3125-4002USl
`
`El
`
`Information Disclosure Statement
`
`| cited references
`El Copy of [
`D PTO Form-1449
`El References cited in parent application Serial No.
`
`, filed
`
`.
`
`D Related Case Statement under 37 CPR. §1.98(a)(2)(iii)
`
`, filed
`
`,
`
`E] A copy of related pending U.S. Application(s) Serial N0(s):
`respectively, is attached hereto.
`E] A copy of related pending U.S. Application(s) entitled,
`invent0r(s)
`, respectively, is attached hereto.
`El A copy of each related application(s) was submitted in parent application serial no.
`, filed
`
`, filed
`
`to
`
`-
`
`
`
`K
`
`K4
`
`Preliminary Amendment
`
`Return receipt postcard (MPEP 503)
`
`g This is a
`continuation [:1 divisional I:I continuation~in-part ofprior application
`
`serial no. 09/400 413, filed September 21, 1999, to which priority under 35 U.S.C. §l20
`is claimed.
`
`of the parent application before
`E] Cancel in this application original claims
`calculating the filing fee. (At least one original independent claim must be retained
`for filing purposes.)
`A Preliminary Amendment is enclosed. (Claims added by this Amendment have
`been properly numbered consecutively beginning with the number following the
`highest numbered original claim in the prior application).
`
`E
`
`The status of the parent application is as follows:
`
`E] A Petition for Extension of Time and a Fee therefor has been or is being filed in the
`parent application to extend the term for action in the parent application until
`
`[:I A copy of the Petition for Extension of Time in the co-pending parent application is
`attached.
`
`N0 Petition for Extension of Time and Fee therefor are necessary in the co-pending
`parent application.
`
`El
`
`CID
`
`Please abandon the parent application at a time while the parent application is pending or
`at a time when the petition for extension of time in that application is granted and while
`this application is pending has been granted a filing date, so as to make this application
`co—pending.
`
`Transfer the drawing(s) from the parent application to this application
`
`Amend the specification by inserting before the first line the sentence:
`This is [:I continuation D divisional El continuation-in—part of co-pending application
`Serial No.
`, filed
`
`660999 v1
`
`Apple, Exhibit 1007, Page 3
`
`Apple, Exhibit 1007, Page 3
`
`

`

`I. CALCULATION OF APPLICATION FEE
`
`Docket No. 3125-4002USl
`
`Total Claims*
`
`I
`Number Filed
`
`102- 20 =
`
`Number Extra
`
`Rate
`
`Basic Fee
`$740.00/370.00
`
`$18.00/ $9.00
`
`$ 738.00
`
`being counted according to 37 C.F.R. §1.75(c)
`
`Multiple Dependent Claims
`
`If marked, add fee of $280.00 ($140.00)
`
`$ 140.00
`
`* Reflects total number of claims for fee purposes, with multiple dependent claims
`
`$ 1668.00
`
`’
`:
`
`E
`
`
`
`X
`
`>14
`El
`
`K4
`
`Small entity status is or has been claimed. Reduced fees under 37 CPR. §l.9 (i) paid
`herewith
`
`$1668.00.
`
`A check in the amount of $1668.00 in payment of the application filing fees is attached.
`Charge fee to Deposit Account No. 13-4500, Order No.
`. A DUPLICATE COPY
`OF THIS SHEET IS ATTACHED.
`
`The Commissioner is hereby authorized to charge any additional fees which may be
`required for filing this application pursuant to 37 CFR§1.16, including all extension of
`time fees pursuant to 37 C.F.R. § 1.17 for maintaining copendency with the parent
`application, or credit any overpayment to Deposit Account No. 13-4500, Order No. 1L2;-
`4002USl. A DUPLICATE COPY OF THIS SHEET IS ATTACHED.
`
`Respectfully submitted,
`MORGAN & FINNEGAN, L.L.P.
`
`Dated: November 1 2001
`
`
`
`By:
`
`Correspondence Address:
`
`MORGAN & FINNEGAN, L.L.P.
`345 Park Avenue
`
`New York, NY 10154-0053
`(212) 758-4800 Telephone
`(212) 751—6849 Facsimile
`
`660999 v1
`
`
`
`Apple, Exhibit 1007, Page 4
`
`Apple, Exhibit 1007, Page 4
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`Applicant(s): McNally et all
`
`Serial N0.:
`.
`Filed:
`
`Continuation of09/400,413
`
`Herewith
`
`Group Art Unit:
`
`Examiner:
`
`Docket No. 3125-4002USl
`
`o E
`[-
`93,.
`3
`2173 (parent case) 3623
`gxf"
`Cao Nguyen (parent cab}:
`5:1—
`
`For:
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS COMMUNICATIONS
`SYSTEM WITH MENU GENERATION
`
`EXPRESS MAIL CERTIFICATE
`
`Express Mail Label No.:
`
`EL606933364US
`
`Date of Deposit:
`
`November 1, 2001
`
`I hereby certify that the following attached paper(s) and/or fee
`
`V‘P‘EAF‘P’N?‘
`
`Utility Application and Fee Transmittal Form;
`Combined Declaration and POA;
`Preliminary Amendment;
`Check in the amount of $1,668.00;
`Patent Application (Specs. 26 pgs., Claims 20 pgs. Abstract 1 pg.)
`Formal Drawings (6 sheets - Figs. 1-7)
`Return Receipt Postcard.
`
` a
`
`:
`
`.%S E
`
`“E
`
`"
`
`:3.-
`L:
`
`is being deposited with the United States Postal Service "Express Mail Post Office to Addressee"
`service under 37 CPR. §1.10 on the date indicated above and is addressed to BOX CPA,
`Commissioner for Patents, Washington, DC. 20231.
`
`Jesus Raul Remedios
`
`
`
`(Typedorprintednameofperso.apers(s) and/or
`
`
`(Signature of ii '
`-
` aper(s) and/or fee)
`
`
`
`Correspondence Address:
`
`MORGAN & FINNEGAN, L.L.P.
`345 Park Avenue
`
`New York, NY 101 54—005 3
`(212) 75 8—4800 Telephone
`(212) 751-6849 Facsimile
`
`661254 v1
`
`Apple, Exhibit 1007, Page 5
`
`Apple, Exhibit 1007, Page 5
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICANTS:
`
`McNally et a1.
`
`GROUP ART UNIT:2173 (parent case)
`
`SERIAL NO.:
`
`Continuation of 09/400,413 EXAMINER: Cao Nguyen (parent case)
`
`FILED:
`
`HEREWITH
`
`FOR:
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS
`COMMUNICATIONS SYSTEM WITH MENU GENERATION
`
`COMMISSIONER FOR PATENTS
`Washington, DC. 20231
`
`PRELIMINARY AMENDMENT
`
`Responsive to the Final Rejection in the Parent Case dated May 22, 2001,
`
`Applicants respectfully request reconsideration in View of the amendment and following
`
`remarks. No fees are believed due. However, in the event that any fees are necessitated by this
`
`response, the Commissioner is hereby authorized to charge our Deposit Account 13-4500, Order
`
`No. 3125-4002USI.
`
`IN THE CLAIMS
`
`Please add new claim 93 as follows.
`
`93.
`
`(new) The information management and synchronous
`
`communication system of claim 45 wherein a non—simultaneous protocol is used to acknowledge
`
`receipt of the data at the valet parking base station.
`
`
`
`REMARKS
`
`I.
`
`Status of the Claims
`
`Claims 1-92 are pending in this application, with claim 93 being added by
`
`this Amendment.
`
`Claims identical to claims 1-19, 20-28, and 35-39 were rejected in the
`
`parent case under 35 U.S.C. 102(6) as being anticipated by Cupps et al. In the parent case these
`
`659742 V1
`
`Apple, Exhibit 1007, Page 6
`
`Apple, Exhibit 1007, Page 6
`
`

`

`claims were identified by numbers 1-19, 31-39, and 50-54 respectively. This Amendment will
`
`refer to the claims by their new numbers.
`
`Claims identical to claims 29-34 and 40-41 were rejected in the parent
`
`case under 35 U.S.C. 103(a) as being unpatentable over Cupps in View of Behr. In the parent
`
`case these claims were identified by numbers 44—49 and 56-57 respectively. This Amendment
`
`will refer to the claims by their new numbers.
`
`Of the pending claims for which identical claims were rejected in the
`
`parent application, claims 1, 12, 20, 29, 32, and 33 are independent.
`
`
`
`11.
`
`Rejections Under 35 U.S.C. 102(e)
`
`In the parent application the Examiner rejected claims identical to
`
`independent claims 1, 12, and 20 under 35 U.S.C. 102(6) as being anticipated by Cupps et a1.
`
`With regard to claims identical to independent claims 1, 12, and 20 of the
`
`present application, the Examiner argues that at lines 35-65 of column 9 and in figs. 2 and 3a-3f,
`
`Cupps discloses information synchronization involving a second or modified menu. However
`
`Applicants respectfully disagree.
`
`The first section cited by the examiner, column 9 lines 35-65, fails to
`
`disclose information synchronization involving a second or modified menu, nor any other sort of
`
`information synchronization. This section instead discloses a customer providing to an online
`
`ordering machine registration information, location information, time of day information, and an
`
`indication of the type of service sought (e.g., takeout or delivery).
`
`The second section cited by the examiner, Fig. 2, is a system overview
`
`showing an online ordering machine component, a client machine component connected to the
`
`online ordering machine via a network, and telephone and fax components connected to the
`
`online ordering machine via standard telephone lines. Also shown are various elements of the
`
`online ordering machine and the client machine. However, nowhere in the figure or its
`
`corresponding disclosure is there any indication of synchronization involving a second or
`
`659742 v1
`
`Apple, Exhibit 1007, Page 7
`
`Apple, Exhibit 1007, Page 7
`
`

`

`modified menu. More generally, there is no disclosure of information synchronization occurring
`
`between any components of the system, nor is there disclosure of any other sort of information
`
`synchronization.
`
`The third section cited by the examiner, Figs. 3a-3f, fails to disclose
`
`synchronization involving a second or modified menu and instead discloses the “schema” — that
`
`is the organization and structure — of the order database 128 (see Cupps, Col. 5 Ln. 21). Nowhere
`
`in the figures or in the corresponding disclosure is there even any indication that the order
`
`database is involved in any sort of information synchronization. In fact, there is no disclosure of
`
`any sort of information synchronization in this section.
`
`Furthermore, the remainder of the Cupps disclosure also fails to disclose
`
`synchronization involving a second or modified menu, nor any other sort of information
`
`synchronization.
`
`claim 1 wherein:
`
`Accordingly, Cupps fails to disclose at least the aspect of independent
`
`"... data comprising the second menu is synchronized
`between the data storage device connected to the
`central processing unit and at least one other
`computing device ..."
`(emphasis added)
`
`Similarly, Cupps also fails to disclose at least the aspect of independent
`
`claim 12 wherein:
`
`data comprising the modified menu is swim
`“
`between the data storage device and at least one other
`computing device...”
`(emphasis added)
`
`Furthermore, Cupps fails to disclose at least the aspect of independent
`
`claim 26 wherein:
`
`synchronizing the data comprising the second menu
`“
`between the storage device and at least one other data
`storage medium, wherein the other data storage medium is
`connected to or is part of a different computing device...”
`
`659742 v1
`
`
`
`
`
`Apple, Exhibit 1007, Page 8
`
`Apple, Exhibit 1007, Page 8
`
`

`

`
`
`
`"
`A“
`
`4
`
`(emphasis added)
`
`The disclosure of the present invention explains that according to the
`
`claimed synchronization there is, for example:
`
`fast synchronization between a central database and
`“
`multiple handheld devices, synchronization and
`communication between a Web server and multiple handheld
`devices, a well-defined API that enables third parties such as
`POS companies, affinifl program companies and intemet
`content providers to fully integrate with computerized
`hospitality applications, real—time communication over the
`internet with direct connections or regular modern dialup
`connections and support for batch processing that can be
`done periodically throughout the day to keep multiple sites in
`synch with the central database.”
`(see disclosure, p. 7 In. 21 — p. 8 ln. 4; emphasis added)
`
`As another example, the disclosure of the present invention notes that
`
`according to such synchronization:
`
`C
`
`a reservation made online can be automatically
`‘
`communicated to the backoffice server and then
`synchronized with all the wireless handheld devices
`wirelessly. Similarly, changes made on any of the wireless
`handheld devices are reflected instantaneously on the
`backoffice server Web pages and the other handheld
`devices.”
`
`(see disclosure, p. 8 1n. 13-16; emphasis added)
`
`In light of the above, Applicants submit that independent claims 1, 12, and
`
`20 are in condition for allowance. As claims 2-11, 13—19, 21-28, 35-39, 49-68, and 84—92 depend
`
`therefrom, these claims, for at least the above-identified reasons, are also thought to be
`
`allowable.
`
`659742 v1
`
`Apple, Exhibit 1007, Page 9
`
`Apple, Exhibit 1007, Page 9
`
`

`

`5
`
`
`
`III.
`
`Rejections Under 35 U.S.C. 103131
`
`In the parent application the Examiner rejected claims identical to
`
`independent claims 29, x32, and 33 under 35 U.S.C. 102(e) as being unpatentable over Cupps in
`
`view of Behr.
`
`As explained above, Cupps fails to disclose any sort of information
`
`synchronization. Furthermore, Applicants find no disclosure in Behr of any sort of information
`
`synchronization, nor does the Examiner provide any reference to such disclosure in Behr .
`
`Applicants therefore submit that Cups and Behr, alone or in combination,
`
`fail to disclose, teach, or suggest at least the aspect of independent claim 29 wherein:
`
`ll
`
`applications or data are synchronized wirelessly
`between the central database and at least one wireless
`
`handheld computing device and wherein the
`applications program interface and communications
`control module establish a seamless link between the
`
`data in the central database and the data on the
`
`wireless handheld computing device."
`(emphasis added)
`
`Similarly, Cups and Behr, alone or in combination, fail to disclose, teach,
`
`or suggest at least the aspect of independent claim 32 wherein:
`
`hospitality applications or data are synchronized
`“
`between the central database, at least one wireless computing
`device and at least one wireless paging or beeper device and
`wherein messaging to the wireless paging or beeper device is
`enabled directly from the operator interface of the wireless
`computing device.”
`(emphasis added)
`
`Furthermore, Cups and Behr, alone or in combination, fail to disclose,
`
`teach, or suggest at least the aspect of independent claim 33 wherein:
`
`6‘
`
`applications or data are synchronized between the
`central database and the second storage medium and wherein
`the applications program interface and communications
`control module establish a seamless link between the data in
`
`659742 vl
`
`Apple, Exhibit 1007, Page 10
`
`Apple, Exhibit 1007, Page 10
`
`

`

`t
`
`the central database and the data on the second storage
`medium.”
`
`(emphasis added)
`
`The Examiner also states:
`
`“Behr teaches wireless handheld computing device on which
`hospitality application (see col. 14, lines 1—57).”
`
`
`
`Applicants respectfully disagree. Behr discloses “a method of providing
`
`route guidance information and other information from a base unit to a mobile unit in response to
`
`a request from the mobile unit” (see Behr, Col. 4 Ln. 28-31). Behr explains that the mobile unit
`
`sends the request for route guidance as a “query message 120” including a “destination field
`
`144” and a “destination type field 146”, and, for example , that the “destination type field 146
`
`may be ‘restaurant’, and the destination field 144 may be ‘McDonald’s’” (see Behr, Col. 14 Ln.
`
`37-44). Behr also discloses that other specifiable destinations include “airport[s]” and
`
`“museum[s]” (see Behr, Col. 14 Ln. 42).
`
`However, Applicants submit that simply stating that a mobile unit may
`
`request from a navigation system directions to a restaurant does not constitute disclosure of a
`
`hospitality software application. As known in the art, a hospitality software application is, for
`
`example, a piece of software used to provide operational solutions in hospitality industries such
`
`as restaurants and hotels concerning, for example, food ordering, menus, wait-lists and
`
`reservations. Accordingly, Applicants submit that Behr fails to teach a “wireless handheld
`
`computing device on which hospitality application” as suggested by the Examiner.
`
`In light of at least the above, Applicants submit that independent claims
`
`29, 32, and 33 are in condition for allowance. As claims 30, 31, 34, 40-48, and 93 depend
`
`therefrom, these claims, for at least the above—identified reasons, are also thought to be
`
`allowable.
`
`659742 V1
`
`
`
`Apple, Exhibit 1007, Page 11
`
`Apple, Exhibit 1007, Page 11
`
`

`

`IV.
`
`Conclusion and Authorization
`
`Applicants believe that all pending claims are allowable over the cited art.
`
`The Commissioner is hereby authorized to charge any additional fees
`
`which may be required for this amendment, or credit any overpayment to Deposit Account No.
`
`13—4500, Order No. 3125—4002. A DUPLICATE OF THIS DOCUMENT IS ATTACHED.
`
`In the event that an extension of time is required in addition to that
`
`requested in a petition for an extension of time, the Commissioner is requested to grant a petition
`
`for that extension of time which is required to make this response timely and is hereby
`
`authorized to charge any fee for such an extension of time or credit any overpayment for an
`
`extension of time to Deposit Account No. 13-4500, Order No. 3 125-4002US 1. A DUPLICATE
`
`OF THIS DOCUMENT IS ATTACHED.
`
`Respectfitlly submitted,
`MORGAN & FINNEGAN, L.L.P.
`
`
`
`November 1, 2001
`
`F.,5“
`
`MORGAN & FINNEGAN, L.L.P.
`345 Park Avenue
`
`New York, NY 10154
`(212)758-4800 / (212)751-6849 (facsimile)
`
`659742 v1
`
`Apple, Exhibit 1007, Page 12
`
`Apple, Exhibit 1007, Page 12
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICANTS:
`
`McNally et al.
`
`GROUP ART UNIT:2173 (parent case)
`
`SERIAL NO.:
`
`Continuation of 09/400,413 EXAMINER: Cao Nguyen (parent case)
`
`FILED:
`
`HEREWITH
`
`FOR:
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS
`
`COMMUNICATIONS SYSTEM WITH MENU GENERATION
`
`COMMISSIONER FOR PATENTS
`
`Washington, DC. 20231
`
`PRELIMINARY AMENDMENT
`
`Responsive to the Final Rejection in the Parent Case dated May 22, 2001,
`
`Applicants respectfully request reconsideration in View of the amendment and following
`
`remarks. No fees are believed due. However, in the event that any fees are necessitated by this
`
`response, the Commissioner is hereby authorized to charge our Deposit Account 13-4500, Order
`
`No. 3125-4002USI.
`
`IN THE CLAIMS
`
`Please add new claim 93 as follows.
`
`93.
`
`(new) The information management and synchronous
`
`communication system of claim 45 wherein a non-simultaneous protocol is used to acknowledge
`
`receipt of the data at the valet parking base station.
`
`
`
`REMA
`
`I.
`
`Status of the Claims
`
`Claims 1-92 are pending in this application, with claim 93 being added by
`
`this Amendment.
`
`Claims identical to claims 1-19, 20-28, and 35-39 were rejected in the
`
`parent case under 35 U.S.C. 102(e) as being anticipated by Cupps et al. In the parent case these
`
`659742 vl
`
`Apple, Exhibit 1007, Page 13
`
`Apple, Exhibit 1007, Page 13
`
`

`

`
`
`)
`
`claims were identified by numbers 1-19, 31-39, and 50—54 respectively. This Amendment will
`
`refer to the claims by their new numbers.
`
`Claims identical to claims 29-34 and 40-41 were rejected in the parent
`
`case under 35 U.S.C. 103(a) as being unpatentable over Cupps in View of Bohr. In the parent
`
`case these claims were identified by numbers 44-49 and 56-57 respectively. This Amendment
`
`will refer to the claims by their new numbers.
`
`Of the pending claims for which identical claims were rejected in the
`
`parent application, claims 1, 12, 20, 29,32, and 33 are independent.
`
`11.
`
`Rejections Under 35 U.S.g;. 102(e)
`
`In the parent application the Examiner rejected claims identical to
`
`independent claims 1, 12, and 20 under 35 U.S.C. 102(e) as being anticipated by Cupps et al.
`
`With regard to claims identical to independent claims 1, 12, and 20 of the
`
`present application, the Examiner argues that at lines 35-65 of column 9 and in figs. 2 and 3a—3f,
`
`Cupps discloses information synchronization involving a second or modified menu. However
`
`Applicants respectfully disagree.
`
`The first section cited by the examiner, column 9 lines 35-65, fails to
`
`disclose information synchronization involving a second or modified menu, nor any other sort of
`
`information synchronization. This section instead discloses a customer providing to an online
`
`ordering machine registration information, location information, time of day information, and an
`
`indication of the type of service sought (e.g., takeout or delivery).
`
`The second section cited by the examiner, Fig. 2, is a system overview
`
`showing an online ordering machine component, a client machine component connected to the
`
`online ordering machine via a network, and telephone and fax components connected to the
`
`online ordering machine via standard telephone lines. Also shown are various elements of the
`
`online ordering machine and the client machine. However, nowhere in the figure or its
`
`corresponding disclosure is there any indication of synchronization involving a second or
`
`659742 v1
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`Apple, Exhibit 1007, Page 14
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`Apple, Exhibit 1007, Page 14
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`

`

`A
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`modified menu. More generally, there is no disclosure of information synchronization occurring
`
`between any components of the system, nor is there disclosure of any other sort of information
`
`synchronization.
`
`The third section cited by the examiner, Figs. 3a—3f, fails to disclose
`
`synchronization involving a second or modified menu and instead discloses the “schema” — that
`
`is the organization and structure — of the order database 128 (see Cupps, Col. 5 Ln. 21). Nowhere
`
`in the figures or in the corresponding disclosure is there even any indication that the order
`
`database is involved in any sort of information synchronization. In fact, there is no disclosure of
`
`any sort of information synchronization in this section.
`
`Furthermore, the remainder of the Cupps disclosure also fails to disclose
`
`:
`
`synchronization involving a second or modified menu, nor any other sort of information
`
`synchronization.
`
`claim 1 wherein:
`
`
`
`Accordingly, Cupps fails to disclose at least the aspect of independent
`
`"... data comprising the second menu is sychronized
`between the data storage device connected to the
`central processing unit and at least one other
`computing device ...“
`(emphasis added)
`
`Similarly, Cupps also fails to disclose at least the aspect of independent
`
`claim 12 wherein:
`
`data comprising the modified menu is smchronized
`“
`between the data storage device and at least one other
`computing device...”
`(emphasis added)
`
`Furthermore, Cupps fails to disclose at least the aspect of independent
`
`claim 26 wherein:
`
`659742 v1
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`synchronizing the data comprising the second menu
`“
`between the storage device and at least one other data
`storage medium, wherein the other data storage medium is
`connected to or is part of a different computing device...”
`
`Apple, Exhibit 1007, Page 15
`
`
`
`Apple, Exhibit 1007, Page 15
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`

`

`(emphasis added)
`
`The disclosure of the present invention explains that according to the
`
`claimed synchronization there is, for example:
`
`fast smchronization between a central database and
`“
`multiple handheld devices, synchronization and
`communication between a Web server and multiple handheld
`devices, a well-defined API that enables third parties such as
`POS companies, affinity program companies and internet
`content prpyjdgs to Billy integrate with computerized
`hospitality applications, real-time communication over the
`internet with direct connections or regular modem dialup
`connections and support for batch processing that can be
`done periodically throughout the day to keep multiple sites in
`smch with the central database.”
`(see disclosure, p. 7 1n. 21 ~ p. 8 ln. 4; emphasis added)
`
`As another example, the disclosure of the present invention notes that
`
`according to such synchronization:
`
`a reservation made online can be automatically
`“
`communicated to the backoffice server and then
`
`synchronized with all the wireless handheld devices
`wirelessly. Similarly, changes made on any of the wireless
`handheld devices are reflected instantaneously on the
`backoffice server Web pages and the other handheld
`devices.”
`
`(see disclosure, p. 8 1n. 13-16; emphasis added)
`
`
`
`
`
`In light of the above, Applicants submit that independent claims 1, 12, and
`
`20 are in condition for allowance. As claims 2~11, 13-19, 21-28, 35-39, 49—68, and 84-92 depend
`
`therefrom, these claims, for at least the above-identified reasons, are also thought to be
`
`allowable.
`
`659742 vl
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`Apple, Exhibit 1007, Page 16
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`Apple, Exhibit 1007, Page 16
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`

`

`
`
`
`
`III.
`
`Rejections Under 35 U.S.C. 1031a}
`
`In the parent application the Examiner rejected claims identical to
`
`independent claims 29, 32, and 33 under 35 U.S.C. 102(e) as being unpatentable over Cupps in
`
`View of Behr.
`
`As explained above, Cupps fails to disclose any sort of information
`
`synchronization. Furthermore, Applicants find no disclosure in Behr of any sort of information
`
`synchronization, nor does the Examiner provide any reference to such disclosure in Behr .
`
`Applicants therefore submit that Cups and Behr, alone or in combination,
`
`fail to disclose, teach, or suggest at least the aspect of independent claim 29 wherein:
`
`applications or data are sypchronized wirelessly
`between the central database and at least one wireless
`
`hpandhflgmnmutmmflce and wherein the
`applications program interface and communications
`control module establish a seamless link between the
`data in the central database and the data on the
`
`wireless handheld computing device.“
`(emphasis added)
`
`Similarly, Cups and Behr, alone or in combination, fail to disclose, teach,
`
`or suggest at least the aspect of independent claim 32 wherein:
`
`hospitality applications or data are swchronized
`“
`between the central database, at least one wireless computing
`device and at least one wireless paging or beeper device and
`wherein messaging to the wireless paging or beeper device is
`enabled directly from the operator interface of the wireless
`computing device.”
`(emphasis added)
`
`Furthermore, Cups and Behr, alone or in combination, fail to disclose,
`
`teach, or suggest at least the aspect of independent claim 33 wherein:
`
`applications gr data are synchronized between the
`“
`central database and the second storage medium and wherein
`the applications program interface and communications
`control module establish a seamless link between the data in
`
`659742 v1
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`Apple, Exhibit 1007, Page 17
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`Apple, Exhibit 1007, Page 17
`
`

`

`the central database and the data on the second storage
`medium.”
`
`(emphasis added)
`
`The Examiner also states:
`
`“Behr teaches wireless handheld computing device on which
`hospitality application (see col. 14, lines 1—57).”
`
`Applicants respectfully disagree. Behr discloses “a method of providing
`
`route guidance information and other information from a base unit to a mobile unit in response to
`
`a request from the mobile unit” (see Behr, C01. 4 Ln. 28-31). Behr explains that the mobile unit
`
`sends the request for route guidance as a “query message 120” including a “destination field
`
`144” and a “destination type field 146”, and, for example , that the “destination type field 146
`
`may be ‘restaurant’, and the destination field 144 may be ‘McDonald’s’” (see Behr, C01. 14 Ln.
`
`37-44). Behr also discloses that other specifiable destinations include “airport[s]” and
`
`“museum[s]” (see Behr, C01. 14 Ln. 42).
`
`However, Applicants submit that simply stating that a mobile unit may
`
`request from a navigation system directions to a restaurant does not constitute disclosure of a
`
`hospitality software application. As known in the art, a hospitality software application is, for
`
`example, a piece of software used to provide operational solutions in hospitality industries such
`
`as restaurants and hotels concerning, for example, food ordering, menus, wait-lists and
`
`reservations. Accordingly, Applicants submit that Behr fails to teach a “wireless handheld
`
`computing device on which hospitality application” as suggested by the Examiner.
`
`In light of at least the above, Applicants submit that independent claims
`
`29, 32, and 33 are in condition for allowance. As claims 30, 31, 34, 40—48, and 93 depend
`
`therefrom, these claims, for at least the above-identified reasons, are also thought to be
`
`
`
`allowable.
`
`659742 v1
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`Apple, Exhibit 1007, Page 18
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`Apple, Exhibit 1007, Page 18
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`

`

`)-
`
`IV.
`
`Conclusion and Authorization]
`
`Applicants believe that all pending claims are allowable over the cited art.
`
`The Commissioner is hereby authorized to charge any additional fees
`
`which may be required for this amendment, or credit any overpayment to Deposit Account No.
`
`13-4500, Order No. 3125—4002. A DUPLICATE OF THIS DOCUMENT IS ATTACHED.
`
`In the event that an extension of time is required in addition to that
`
`requested in a petition for an extension of time, the Commissioner is requested to grant a petition
`
`for that extension of time which is required to make this response timely and is hereby
`
`authorized to charge any fee for such an extension of time or credit any overpayment for an
`
`extension of time to Deposit Account No. 13-4500, Order No. 3125-4002USl. A DUPLICATE
`
`OF THIS DOCUMENT IS ATTACHED.
`
`
`
`
`Respectfully submitted,
`MORGAN & FINNEGAN, L.L.P.
`
`November 1, 2001
`MORGAN & FINNEGAN, L.L.P.
`345 Park Avenue
`New York, NY 10154
`(212)758-4800 / (212)751-6849 (facsimile)
`
`659742 v1
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`Apple, Exhibit 1007, Page 19 ~
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`Apple, Exhibit 1007, Page 19
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`

`

`I"
`
`' EXPRESS MAIL CERTIFICATE NO. EL606933364US
`
`Attorney Docket No. 3125-4002USI
`
`UNITED STATES PATENT APPLICATION
`
`For:
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS COMMUNICATIONS
`SYSTEM WITH MENU GENERATION
`
`
`
`Inventors:
`
`Keith R. McNALLY
`
`WILLIAM H. ROOF
`
`RICHARD BERGFELD
`
`658960 v1
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`Apple, Exhibit 1007, Page 20
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`Apple, Exhibit 1007, Page 20
`
`

`

`UNITED STATES PATENT APPLICATION
`
`OF: KEITH R. McNALLY
`WILLIAM H. ROOF
`
`RICHARD BERGFELD
`
`FOR: INFORMATION MANAGEMENT AND SYNCHRONOUS
`
`COMMUNICATIONS SYSTEM WITH MENU
`
`GENERATION
`
`The present application is a continuation of application Serial No. 09/400,413,
`
`filed September 21, 1999. The contents of application Serial No. 09/400,413 are incorporated
`
`y._a
`
`2 3