Application/Control Number: 11/112,990
`
`Page 33
`
`Art Unit: 2191
`
`similar to FIG. 1D, with the addition that an Internet link is interposed between the
`
`desktop computer C and the wireless carrier. In FIG. 1E, the wireless carrier
`
`communicates with an Internet service provider via a suitable protocol such as
`
`TCP/IP protocol...”)
`
`wherein the system is enabled for real time synchronous transmission of the configured
`
`hospitality application information to the wireless handheld computing device, the web
`
`server and the web page and real time synchronous transmissions of inputs responding
`
`to the configured hospitality application information from the wireless handheld
`
`computing device, or the web server or the web page. (Chase Col. 6 Ln 46 to Col 7,
`
`Ln 5, “...Typically, data transmitted via the Internet via the World Wide Web still
`
`resembles that of the wireless packets, as the typical Web message size is small.
`
`Thus, in addition to wireless carriers, the handheld computer of the present
`
`invention can communicate with the desktop computer C via land lines, via
`
`wireless lines, or other means, including the Internet and variants thereo,
`
`including "intranets", or intra-corporation networks. These communication media
`
`meld computing power with network and wireless access, offering users
`
`significant leaps in productivity and accessibility.”)
`
`In addition it would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to combine the teachings of Micros ’97 with the teachings of Chase as Micros
`
`’97 teaches the use of handheld terminals (see e.g. 1-15) and Chase teaches “a real
`
`time solution that avoids data conflicts by shortening the time between synchronization
`
`events is needed. Therefore, it is desirable to have a small handheld computer system
`
`Apple, Exhibit 1012, Page 801
`
`Apple, Exhibit 1012, Page 801
`
`

`
`Application/Control Number: 11/112,990
`
`Page 34
`
`Art Unit: 2191
`
`capable of ...being dynamically synchronized to alleviate the data coherency problem.”
`
`(Chase Col. 3, Ln 15-25.)
`
`Regarding Claim 123, Micros ’97 teaches:
`
`between multiple hospitality software applications including at least [one] two of
`
`restaurant seP+iee,—er—point of sale systems (UWS1-3, See Chapter 1), or reservations ,
`
`or waitlists (e.g. order waiting line B-30), r frequent
`
`customer or ticketing programs (Check Operations Chapter 4). (1-2, “The System
`
`Configurator module is an integral part of the 8700 System, providing :the means
`
`to create and edit the database files that define the parameters of the system--to
`
`program the restaurant’s operation into the system.”)
`
`Further Chase teaches: information comprising at least a part of the programmed
`
`handheld menu configuration is synchronized in real time (Chase Col. 11, Ln 63 to Col.
`
`12, Ln 37, “Turning now to FIG. 6B, the software running on the handheld
`
`computer H for synchronizing data is shown in greater detai|...the desktop C and
`
`handheld computer H of the present invention mimic the SMP coherent behavior
`
`Apple, Exhibit 1012, Page 802
`
`Apple, Exhibit 1012, Page 802
`
`

`
`Application/Control Number: 11/112,990
`
`Page 35
`
`Art Unit: 2191
`
`by attacking the synchronization problem in a real-time versus batch-mode
`
`manner.”)
`
`Regarding Claim 124, Chase teaches: enabled to automatically communicate selections
`
`made from a menu on at least one web page or at least one wireless computing device
`
`and transmitted over the internet to either the master database or at least one wireless
`
`handheld computing device or at least one web page. (Chase Col. 6 Ln 46 to Col 7, Ln
`
`5, “...Typically, data transmitted via the Internet via the World Wide Web still
`
`resembles that of the wireless packets, as the typical Web message size is small.
`
`Thus, in addition to wireless carriers, the handheld computer of the present
`
`invention can communicate with the desktop computer C via land lines, via
`
`wireless lines, or other means, including the Internet and variants thereo,
`
`including "intranets", or intra-corporation networks. These communication media
`
`meld computing power with network and wireless access, offering users
`
`significant leaps in productivity and accessibility.”)
`
`Regarding Claim 125, Micros ’97 teaches:enabled to automatically communicate
`
`selections made from a menu on at least one wireless handheld computing device to
`
`either the master database or the web server. (1-15“Hand-Held Touchscreen
`
`Features “The HHT is a portable User Workstation. Like the UWS/3, it contains an
`
`Apple, Exhibit 1012, Page 803
`
`Apple, Exhibit 1012, Page 803
`
`

`
`Application/Control Number: 11/112,990
`
`Page 36
`
`Art Unit: 2191
`
`8700 Revenue Center database. Using the HHT, an operator can post orders,
`
`close guest checks, and perform al most every other operation that is available
`
`on a UWS. The HHT communicates by radio frequency with a Base Station, which
`
`is cabled roan LCC or RCC in one of the PCs in an 8700 System. The HHT
`
`transmits posting and transaction information to the Base Station (BST), and the
`
`BST transmits guest check information and [menu] database modifications to the
`
`HHT.”)
`
`Regarding Claim 126, Micros ’97 teaches: wherein the hospitality application
`
`information relates to payment processing. (8-9, “Print Guest Checks [Service Total]
`
`initiates guest check printing for By-round operators. For On- demand operators
`
`no printing takes place. [Print Check] (which is a service total key programmed to
`
`print) initiates guest check printing for On-demand operators and reprints checks
`
`for By-round operators. Example On-demand: Pressing [Service Total] as an On-
`
`demand operator will not cause a guest check to print. However, if you dose the
`
`check with a payment key or press [Print Check], a guest check will print. By-
`
`round: Pressing [Service Total] as a By-r ound operator will print the guest check,
`
`If your UWS is programmed to print guest checks at the slip printer, you must
`
`place the guest check in the printer.” Note the HHT icon on this page, indicating
`
`the check printing can be processed from the HHT, see also set up on 11-38)
`
`[here, the wireless HHT facilitates payment processing by printing the check to tender to
`
`the customer]
`
`Apple, Exhibit 1012, Page 804
`
`Apple, Exhibit 1012, Page 804
`
`

`
`Application/Control Number: 11/112,990
`
`Page 37
`
`Art Unit: 2191
`
`Regarding Claim 127, Kavensky teaches: wherein the configured wireless handheld
`
`computing device is a smart phone.
`
`( Kavensky Col. 2, Ln. 20-44, “Advantageously,
`
`any type of display device and associated screen can be provided by a user: e.g.,
`
`webphone or palmtop. Also, any size window may be displayed on such
`
`screen...”)
`
`Response to Arguments
`
`6.
`
`Applicant's arguments with respect
`
`to claims 103—110,115—127 have been
`
`considered but are moot in view of the new ground(s) of rejection.
`
`lnsomuch as the
`
`remarks address the Micros ’97 reference, they are moot (because either Micros ’97 is
`
`not relied on for the argued element in the rejection above or applicant's amendments
`
`have rendered the argument moot). All arguments that are still pertinent to Micros ‘97’s
`
`use in the rejection above are addressed below.
`
`7.
`
`On Pages 19-21, applicant argues that Micros ’97 “teaches away” from the
`
`present invention. Examiner respectfully disagrees. “the prior art’s mere disclosure of
`
`more than one alternative does not constitute a teaching away from any of these
`
`alternatives because such disclosure does not criticize, discredit, or otherwise
`
`discourage the solution claimed....” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d
`
`1141, 1146 (Fed. Cir. 2004). While Micros '97 may not teach all the elements of the
`
`Apple, Exhibit 1012, Page 805
`
`Apple, Exhibit 1012, Page 805
`
`

`
`Application/Control Number: 11/112,990
`
`Page 38
`
`Art Unit: 2191
`
`present invention,
`
`it does not disparage any of the concepts at issue, and thus cannot
`
`be considered to be teaching away from the present invention.
`
`8.
`
`Applicant’s arguments on pages 19-35 regarding the Micros ’97 reference are
`
`otherwise moot as they address:
`
`the “menu generation software [not separate
`
`programming]”, “real time synchorization” and other elements either no longer present in
`
`the claim or taught by the other references new grounds of rejection.
`
`9.
`
`Applicant’s Arguments
`
`regarding the Cupps Patent
`
`are
`
`also moot or
`
`unpersuasive. Cupps taught the display of restaurant menus in a web page. Applicant’s
`
`arguments against Cupps synchorization of the web page are moot
`
`in view of the
`
`Kavensky & Chase references in the new grounds of rejection.
`
`10.
`
`Applicant’s Arguments regarding Olewicz’s availability as prior art are moot in
`
`view of the new grounds or rejection necessitated by applicant’s amendment which
`
`does not include that reference.
`
`11.
`
`Applicant’s Arguments with regards to the dependent claims on pages 50-56 are
`
`also moot in view of the new grounds of rejection.
`
`Conclusion
`
`2.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR1.136(a).
`
`Apple, Exhibit 1012, Page 806
`
`Apple, Exhibit 1012, Page 806
`
`

`
`Application/Control Number: 11/112,990
`
`Page 39
`
`Art Unit: 2191
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE—MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MATTHEW J. BROPHY whose telephone number is
`
`571-270-1642. The examiner can normally be reached on Monday—Thursday 8:00AM-
`
`5:00 PM EST.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Wei Zhen can be reached on (571) 272-3708. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Apple, Exhibit 1012, Page 807
`
`Apple, Exhibit 1012, Page 807
`
`

`
`Application/Control Number: 11/112,990
`
`Page 40
`
`Art Unit: 2191
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair—direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll—free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`MJB
`
`1/8/2010
`
`/Wei Y Zhen/
`
`Supervisory Patent Examiner, Art Unit 2191
`
`Apple, Exhibit 1012, Page 808
`
`Apple, Exhibit 1012, Page 808
`
`

`
`App|icant(s)IPatent Under Reexamination
`
`Index Of Claims
`
`
`
`
`App|icationIContro| No.
`
`11112990
`
`MCNALLY ET AL.
`
`
`
`
` Examiner
`
`Art Unit
`
` MATTHEW J BROPHY 2191
`
`
`
`Cancelled
`
`Non-Elected
`
`Allowed
`
`Restricted
`
`Interference
`
`Objected
`
`El Claims renumbered in the same order as presented by applicant
`
`El CPA
`
`El T.D.
`
`El R.1.47
`
`CLAIM
`Final
`
`
`
`DATE
`03/07/2008 08/15/2008 12/08/2008 04/1 1/2009 01/08/2010
`J
`J
`J
`J
`J
`J
`J
`J
`J
`
`Jmmmmm1
`
`10
`111
`112
`
`J
`J
`J
`
`J
`J
`J
`
`J
`J
`J
`
`J
`_
`_
`
`J
`_
`_
`
`Hm
`gm
`2“
`
`mm1
`
`Jmmmmm1
`
`25
`
`J
`
`J
`
`J
`
`J
`
`J
`
`———
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. : 20091216
`
`Apple, Exhibit 1012, Page 809
`
`13
`119
`120
`
`J
`J
`J
`
`J
`J
`J
`
`J
`J
`J
`
`J
`J
`J
`
`J
`J
`
`Apple, Exhibit 1012, Page 809
`
`

`
`App|icationIContro| No.
`
`App|icant(s)IPatent Under
`Reexamination
`
`Seafch NOteS
`
`11112990
`
`MCNALLY ET AL.
`
`
`
`Examiner
`
`MATTHEW J BROPHY
`
`
`
`Art Unit
`
`2191
`
`
`Class Examiner Subclass Date
`
`715
`810-845
`1/8/2010
`MJB
`
`
`
`SEARCHED
`
`SEARCH NOTES
`
`Search Notes
`
`Examiner
`
`
`
`See EAST search History
`inventor search in EDAN
`
`NPL (Google Scholar, ACM, IEEE)
`
`1/8/2010
`1/8/2010
`
`1/8/2010
`
`MJB
`
`MJB
`
`INTERFERENCE SEARCH
`
`/MATTHEW J BROPHYI
`
`Examiner.Art Unit 2191
`
`U.S. Patent and Trademark Office
`
`App|e’
`
`821J@1216
`
`Apple, Exhibit 1012, Page 810
`
`

`
`In‘.-.
`l
`«
`
`-
`
`‘oz/5'3/2016 10:43 FAX 619 233 4959
`
`MAZZARELLA CALDARELLVIRECE“/ED
`
`CENTRALFAXCENTER
`
`002/oo2
`
`FEB 03 2010
`PTOISBIB1 (11-08)
`Approveclfor use through 11/300011. OMB 0851-0035
`U.S. Patent and Traderrwi: Otfice; U.S. DEPARTMENT OF COMMERCE
`- toaeolledlonoflnformatlon r
`.-_.=
`-
`:
`1
`r-_ '
`WWO!-
`
`Attorney Docket Number
`
`1004293-005 U5
`
`
`
`Underthe Pa -
`
`-
`
`ReductionActot1995 no ersons are --
`
`POWER OF ATTORNEY
`OR
`
`REVOCATION OF POWER OF ATTORNEY
`WITH A NEW POWER OF ATTORNEY
`. AND
`CHANGE OF CORRESPONDENCE ADDRESS
`
`
`K
`
`Please recognize or change the correspondence address for the above-identified appllatton to:
`I: The address associated with the above-mentioned Customer Number.
`OR
`
`E]
`
`The address associated with Customer Number:
`OR
`
`[Z] 33%;, Name Marella Caldarelll up
`Address
`
`cw
`I@_ ”5’‘
`61913114900
`
`Iamtne:
`
`we
`
`as»
`
`W ""'"""°m
`
`D Applicant/inventor.
`OR
`Asslgnee of record of the entire interest. See 37 CFR 3.71.
`Statement under 37 CFR 3.73(b) (Form PTO/SB/96) submitted herewith orfiled on
`
`
`-am-=ew~
`W31’/.4.’/’. °' " ‘
`newts-_-rrj +1(8s8)z:sz-mso
`W
`N_Q]I'.Si9iBtu'es0fa!ithei11ven1nrI or edgnoeudmeord nlthe a -
`' mtnreaton-lhei:rapreeentative(s) are required. Submit rrutiplo torrni I mare lhanune
`signature is required, see below’.
`
`forms are slbrritted.
`D ‘Total at
`Thlscdlecllon oflnformaiionll required by37 CFR1.31. 1.32 and 1.33.Thainforma1ionisraqx.iredtoobtain orreaaina benefit bythe puhticwhith iatotllemnd bythe
`USPTO to process) an wpliation. corfidentidity is governed by 35 U.$.C. 122 and 37 CFR 1.11 and 1.14. This collection is estirmted to take 3 rninuteo to complete.
`including gathering, prepariia. and subrnitlng the completed appliatlon form to the USPTO. Time will vary depending upon the inclvtduel sass. Any oornrnents on
`the amoum a time you require to mrnptetle ttls iorrn andlor suggestions for redudng this burden, should be sent to the Cflel lnlormdion Otfhor. U.5. Patent and
`Tmdernark Office. U.S. Department at Corrlnenm. PO. Box 1450. Alexandria. VA 22313-1450. 00 NOT SEND FEES OR COMPLETED FORMS TO THIS
`ADDRESS. SEND To: commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`If you need assistance in completing the form, call 1-800-PTO-9199 and salad option 2.
`
`i hereby revoke all previous powers of attorney given in the above-Identified application.
`
`'3 A Power ofAttomey is submitted herewith.
`OR
`I hereby appoint Praotltloner(s) associated with the following Customer
`Number as my/our attomey(s) or agent(s) to prosecute the applition
`identified above. and to transact all business In the United States Patent
`and Trademark Office connected therewith:
`OR
`
`l hereby appoint Practitioners) named below as mylour attomey(a) or agent(s) to prosecute the appllintlon identified ubove. and
`to transact all business in the United States Patent and Trademark Oflioe connected therewittu
`
`Registration Number Practitioner(s) Name
`
`
`
`PAGE 2/2 ' RCVD AT 2I3I2010 1:47:03 PM [Eastern Standard Time] ' SVR:USPTO~EFXRF-6/9 " DN|S:2738300 ' CSlD:619 238 4959 ' DURATION (mm-ss):0o-68
`
`Apple, Exhibit 1012, Page 811
`
`Apple, Exhibit 1012, Page 811
`
`

`
`.\
`
`FE/oa/2010 "1o:43 FAX
`
`619 238 4959
`
`RECEIVED
`MAZZARELLA CALDARELLI GENTFIALFAXC
`FEB 03 2010
`
`001,002
`
`MAZZARELLA I CALDARELLI up
`ATTORNEYS AT LAW
`
`550 war it“ STREET. suns 10o
`SAN DIEGO. cA1n1n1<I:::
`
`TELEPHONE: 519 233 ceoo
`FACSIMLE: on 233 4959
`
`FACSIMILE TRANSMITTAL SHEET
`
`TO:
`
`FROM:
`
`U-sit-.. -_.ta.es Pa-..nt Office.
`
`COMPANY:
`
`.
`
`Michael D. Fabiano
`(mfabiano@mazzcal.com)
`SENDER’S DIRECT DIAL:
`
`Commissioner of Patents
`EXTENSION 306
`
`FAX NUMBER:
`DATE:
`
`
`571.273.8300
`February 3, 2010
`PHONE NUMBER:
`TOTAL NO. OF PAGES INCLUDING COVER:
`
`866.217.9197
`2
`
`
`RE:
`
`CLIENT REFERENCE NUMBER:
`
`Power of Attorney for Application
`Number 1 1/1 12,990
`
`1660.04
`
`
`El URGENT CI FOR REVIEW B PLEASE COMMENT
`Cl PLEASE REPLY
`
`CI ORIGINAL WILL FOLLOW
`Notes:
`
`This facsimile is for the sole use of the Intended I-ecxp1ent(s) and may contain confidential and privileged mfurmatwn. Any unauthonzcd review,
`use, disclosure, or dish-Il>ution is prohflaited. If you are not the intended recipient. please contact the sender at the number listed above and
`destroy all copies of the original facsimile.
`
`PAGE 112 ‘ RCVD AT 2I3I201O 1:47:03 PM [Eastern standard Time] ‘ SVR.'USPTO-EFXRF-6/9 " DNlS:2738300 ' CS|D:619 238 4959 " DURATION (mm-ss):o0-68
`
`Apple, Exhibit 1012, Page 812
`
`Apple, Exhibit 1012, Page 812
`
`

`
`02/11/2010 12:23 FAX
`
`619 233 4959‘
`
`MAZZARELLA CALDARELLI
`
`REGENED
`CENTRAL FAX CENTER
`
`003/003
`
`FEB ‘l
`
`‘l 2010
`
`Application No. 11/112,990
`
`Docket No. 1004293.D05US
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Application No. 1 1/1 12,990
`
`Confirmation No.:
`
`7098
`
`Applicants: McNally, et al.
`
`Group Art Unit:
`
`2191
`
`Filed: April 22, 2005
`
`Examiner:
`
`Brophy, Matthew
`
`For:
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS
`COMMUNICATIONS SYSTEM WITH MENU GENERATION, AND
`HANDWRITING AND VOICE MODIFICATION OF ORDERS
`
`
`Mail Stop AF
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`PRE-APPEAL BRIEF REQUEST FOR REVIEW
`
`1.
`
`Authority.
`
`Applicants’ claims have been rejected at least twice, and the most recent Office
`
`Action, dated January 8, 2010, was deemed final. Thus, filing a Notice of Appeal with
`
`the proper fee and a pre-appeal brief is proper under 35 U.S.C. § 134.
`
`‘
`
`II.
`
`Disposition of Claims.
`
`Claims.l03-110 and 115-127 are pending in the present application. Claims 103
`and 122 are independent claims.
`The remaining claims depend either. directly or
`
`indirectly from claims 103 and 122.
`
`HI.
`
`Remarks.
`
`Claims 103-110 and 115-121 stand rejected under 35 U.S.C. § 103(a) as being
`
`unpatentable over Micros Systems Inc. “8700 HMS 2.10 Users Manual,” copyright 1997
`(hereinafter “Micros”) in View of U.S. Patent No. 6,300,947. (hereinafier “Kanevsky”)
`
`and U.S. Patent No. 5,974,238 (hereinafter “Chase”). Claims 122-127 stand rejected
`
`-1-
`
`PAGE 3l8 " RCVD AT 2I11I2010 3:26:04 PM [Eastern Standard Time] " SV'R:USP'I'O-EFXRF-6I27 ' DNlS:2738300 " C$lD:619 238 4959 " DURATION (mm-ss):02-18
`
`Apple, Exhibit 1012, Page 813
`
`Apple, Exhibit 1012, Page 813
`
`

`
`02/11/2010 12:23 FAX
`
`619 238 4959
`
`MAZZARELLA CALDARELLI
`
`004/003
`
`Application No. 11/112,990
`
`Docket No. 1004293.005US
`
`under 35 U.S.C. § l03(a) as being unpatentable over Micros in view of U.S. Patent No.
`5,991,739 (hereinafter “Cupps”) and.Kanevsky and Chase. For the reasons set forth
`
`herein, these rejections are respectfiilly traversed.
`
`.
`
`In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) was misapplied in the January
`
`8, 2010 Office Action, which wrongly denied applicants i‘teaching away’ argument
`
`against the Micros reference (which clearly states that it ‘m_u_s.t’ execute steps in. gig
`
`13;; to the present
`invention) by asserting that a reference may be applied in
`combination so long as it does not “disparage...
`the concepts at issue.” There is no
`
`requirement in Fulton,~or in the MPEP, that references must “disparage” the concepts of
`the present invention in order to preclude combination or modification. That is especially
`
`so here, where the Micros reference is a product description (which only describes what
`
`the product does) and not a patent (in which inventors often reference and sometimes
`
`‘disparage’ alternatives, if known). The Fulton Court held that dispamgement is merely
`
`QQQ ground, and not the exclusive means, for disqualifying a reference.
`
`The Office Action states, in a conclusory way, that the teachings of Micros could
`
`be combined with Kanevsky or Chase (as to Claims 103-110 and 115-121) or with
`
`Kanevsky, Chase, and/or Cupps (as to Claims 122-127).
`
`(Office Action, pp. 12, 14-15,
`
`28). No explanation is given (for the conclusion that these combinations would be
`obvious to one skilled in the art. Such conclusory statements, without specific ob-jective
`
`reasons to combine the references, are not sufficient to establish obviousness. MPEP
`
`' 2143.01, section IV, citing Ex 1’arte Levengood, 28 USPQ2d‘ 1300 (BPAI 1993). See
`
`also KSR v. Teleflex, 550 U.S. 398, 82 USPQ2d 1385, 1396-1398 (2007) (“Ofien, it will
`
`be necessary for a court to look to interrelated teachings of multiple patents; the efl:‘ects of
`
`-2-
`
`PAGE U8 " RCVD AT 2/11/2010 3:26:04 PM [Eastern standard Time] ‘ SVR:'USPTO-EFXRF-5f27 ‘ DNlS:2738300 ‘ CSlD:619 238 4959 “ DURATION (mm-ss):02-18
`
`Apple, Exhibit 1012, Page 814
`
`Apple, Exhibit 1012, Page 814
`
`

`
`02/11/2010 12:23 FAX
`
`619 238 4959
`
`MAZZARELLA CALDARELLI
`
`-
`
`005/008
`
`Application No. 1 1/1 12,990
`
`Docket No. l0O4293.'005US
`
`demands known
`
`or present
`
`in the marketplace; and the background knowledge
`
`possessed by a person having ordinary skill in the art, all in order to determine whether
`
`there was an apparent reason to combine the known elements in the -fashion claimed by
`the patent at issue.’ To facilitate review, this analysis should be made explicit.’’)
`
`Although disparagement is not required by In re Fulton or any other authority,
`
`Chase does, in fact, disparage and ‘teach away’ from the present invention’s use of a
`
`central computing unit and gait database for the storage of data within a synchronous
`
`system: “The prior resolutions of the data synchronization problem were generally very
`
`_tirne consuming and tedious... One solution was to limit the accessibility of files such
`
`that only files physically residing with the user were the master.- However, this solution
`
`dictated that no changes could be made to the other system without the danger of losing
`
`those changes.
`
`Thus...
`
`the combination was not popular...
`
`the problem of
`
`synchronization limited the potential. .
`(Chase, col. 2, lines 55-67.) Every claim of the
`present application utilizes a central computing unit and i‘ database.
`In re Fulton 9
`
`therefore bars the use of Chase as a reference herein, because Chase ismgpg the
`
`A concepts of and thus ‘teaches away’ from the concepts of the present application.
`
`The use of Chase as a reference also violates In re Gordon, 733.F.2d 900 (Fed.
`
`Cir. 1984), and MPEP 2143.01 sec. V, in that using Chase in cornbination with Micros
`
`would render Chase unsatisfactory for Chase’s intended purpose of data synchronization
`
`involving a handheld device and a central computer wllhglt storing the r_n_a_s_te_r; database
`
`on the host/central computer and also requiring a “distributed” system, i.e., with each
`
`‘distributed’ handheld computer pre-loaded with the ‘data synchronization engine’
`
`software and a “shared data set” (Chase, col. 3, lines 29-31, 33-35, 44-45). I
`
`-3-
`
`PAGE 5I8 " RCVD AT 2I11I2010 3:28:04 PM [Eastern Standard Time] " SVR:U8PTO-EFXRF-5/27 ' DNlS:273830O " CS|D:B19 238 4959 " DURATION (mm~ss):02-18
`
`Apple, Exhibit 1012, Page 815
`
`Apple, Exhibit 1012, Page 815
`
`

`
`02/11/2010 12:23 FAX
`
`619 238 4959
`
`MA-ZZARELLA CALDARELLI
`
`006/008 .
`
`Application No. 11/112,990
`
`Docket No. l004293.00SUS
`
`Additionally, using Chase in combination with Micros also violates In re Ratti,
`
`270 F.2d 810 (CCPA 1959), and MPEP 2143.01 sec. VI, because the combination,
`
`requiring the use of a central computer and M vdatabase,.changes the principle of
`operation of Chase, which teaches data synchronization involving a handheld device and
`
`a central computer wflgt a master database.
`
`The previous arguments were also applied by the USPTO, and claims confirmed
`
`patentable, in a re-examination that also distinguished between a central/master system
`
`and a distributed system:
`
`“Reasons for Patentability/Confirmation”, Control No.‘
`
`90/006,831 (re patent no. 5,83 8,906), pp. 21-24 (dated 9/27/2005).
`
`For these reasons, all of the claim limitations in the pending claims are "neither
`
`taught nor fairly suggested by the combination(s) of cited references. Among other
`
`things, any combination of Chase with Micros, Kanevsky, and Cupps is a contradiction
`
`because such combination requires the use of a gi_2§tt:_r database, expressly disparaged in
`
`Chase, which teaches away from the “centralized” technologypof the present application
`
`(as well as any combination of the other references cited by the Examiner).
`
`Further, the 32 CFR § 1.132 declaration of Keith R. McNally provides very
`strong evidence that industry leaders, persons skilled in the art, recognized the present
`
`I
`
`invention as non-obvious, and that this technologyis separate and distinct fi‘om that of
`
`the Micros manual, the Cupps patent, and the other references cited. The McNally
`
`declaration confirms both the nexus of the present invention with its widespread market
`
`adoption/recognition, and the non-obviousness of the present invention. The McNally
`
`declaration includes confirmations from the owners of both the Micros and Cupps
`
`references that they licensed or sought to license applicants’ technology — the invention
`
`.4-
`
`PAGE 618 " RCVD AT 2/11/2010 3:26:04 PM [Eastern Standard Time] ‘ SVR:USP'|’0-EFXRF-5/27 " DN|S:2738300 " CSlD:B19 238 4959 " DURATION (mm-ss):02-18
`
`Apple, Exhibit 1012, Page 816
`
`Apple, Exhibit 1012, Page 816
`
`

`
`I02/11/2010 12:2a ‘FAX
`
`619 233 4959
`
`MAZZARELLACALDARELLI
`
`RECEIVED
`CENTRAL FAX CENTER
`
`007/oos
`
`FEB 1 12010
`
`Application No. 1 1/ 1 12,990
`
`,
`
`Docket No. 1004293.005US
`
`disclosed in the present application — and recognized it as a separate invention over and
`
`above their own technologies (i.e., the very references Examiner cited against applicants
`
`herein.) Food.com, the company that owned the Cupps patent and was founded by the
`
`inventors of that patent, recognized the inventive technology and value of Ame:ranth’s
`
`technology over and above that of the Cupps patent, i.e. Food.com’s own technology, and
`
`entered into a Strategic Alliance in 1999 intended to employ Ameranth’s technology,
`
`including the present invention, in concert with their own technology.
`
`(1|1| 5, 22, S17, and
`
`29 and Exh. 14, 19, 21, and 23.) Micros Systems (owner of the Micros product) sought
`
`to exclusively license Ameranth’s intellectual property,
`
`including that of the present
`
`application, in the year 2000. (11 48 and Exh. 40-42.) Inexglicably, and in conflitt with
`
`MPEP 716,
`
`the Office Action does not
`
`indicate any consideration of the McNally
`
`declaration, even though the Examiner had reguested it during a face-to-face interview.
`
`IV.
`
`Conclusion.
`
`As set forth herein, the Examiner has failed to show that the teachings of the cited
`
`prior art references are sufficient to render the pending claims obvious. Accordingly,
`
`Applicants respectfiilly requesta favorable decision from this panel.
`
`Dated: February 11, 2010
`
`Respectfully submitted,
`
`/s/ Michael D. Fabiano
`MICHAEL D. FABIANO
`
`Registration No. 44,675
`MAZZARELLA I CALDARELLI LLP
`
`550 West C Street, Suite 700
`San Diego, California 92101
`(619) 238-4900 Telephone
`(619)238-4959 Facsimile
`
`Attorney for Applicants
`
`-5-
`
`PAGE 7I8 ' RCVD AT 2/11/2010 3:25:04 PM [Eastern standard Tlme] ' SVR:USPTO-EFXRF-5I27 ‘ DN|S:2738300 ‘ CSlD:610 238 4959 " DURATION (mm-ss):02-18
`
`Apple, Exhibit 1012, Page 817
`
`Apple, Exhibit 1012, Page 817
`
`

`
`Notice of Fee Due
`
`4-..2--._-+Bm,-_m”____-fi9sg.;;g_¢.po_;-..-_------.-.-_--_.-_-._-.____-_..-.__--______._---_-_-
`
`Application Number:
`
`/[,7 4 00
`
`A fee is due for the attachedidocument for the reason indicated below. Please check the
`
`application for the appropriate authorization to charge a deposit account. If an
`Eii.:?il.1Ol'lZEl'LlOI] is present, please charge the appropriate fee*. If an a::.‘;.l'.ioi'i‘/zziiioii is not
`prersent, iioizify the application of the fee deficiency.
`
`*If the fee due is for any of the filingfees, check for authorization to charge the
`surcharge. If'aut,horization is present, charge the surcharge for late payment of the
`. filing fees as well.
`
`D Insufficient payment by check or money order.
`
`[3 Insufficient funds in deposit account
`
`glnsufficient payment by credit card.
`
`Cl Declined credit card.
`
`l2{No authorization to charge a deposit account.
`
`at
`
`:
`
`(time).
`
`Fee code(5) to be applied:
`
`*
`
`/40 /
`
`‘lib
`
`0
`
`1506
`
`1622/2622
`1999
`
`4 I 0 0
`
`(ff
`
`'4' 0
`
`Amount in holding fee code:
`
`Total remaining due from applicant:
`vI
`
`RAM Operator
`
`Rev. 12/27/07
`
`Apple, Exhibit 1012, Page 818
`
`Apple, Exhibit 1012, Page 818
`
`

`
`02/11/2010 12:22 FAX
`
`619 238 4959
`
`MAZZARELLA CALDARELL1
`
`OENmAL‘i-'£\.XC@n'EFlroos
`
`MAZZARELLA I CALDARELLI LLP
`ATTORNEYS AT LAW
`
`550 WEST ‘C’ SYREET. SUITE 700
`SAN DIEGO, CA 921014235
`
`TE.EPl-KINE: 519 238 4900
`FACSIMILE: B18 238 4959
`
`FACSIMILE TRANSMITTAL SHEET
`
`TO:
`
`FROM:
`
`»
`A
`Mail Stop AF
`Commissioner for Patents
`COMPANY:
`
`Michael D. Fabiano
`(mfabiano@mazzca].com)
`SENDER'S DIRECT DIAL:
`
`U.S. Patent and Trademark Office
`EXTENSION 306
`
`FAX NUMBER:
`.
`DATE:
`
`
`571.273.8300
`February 11, 2010 _
`PHONE NUMBER:
`ToTAL NO. OF PAGES INCLUDING COVER:
`
`8
`
`
`RE:
`
`1660.04
`
`_
`
`CLIENT REFERENCE NUMBER:
`
`Application No. 11/112,990
`
`
`El URGENT Cl FOR REVIEW E] PLEASE COMMENT [3 PLEASE REPLY
`
`Notes:
`
`»
`
`'
`
`D ORIGINAL WILL FOLLOW
`
`Attached are the following documents:
`
`1)
`
`2)
`
`3)
`
`Notice of Appeal
`
`Pre-Appeal Brief Request for Review; and
`
`Credit Card Payment Form
`
`
`This facsimile is for the sole use of the intended recipient(s) and may contain confidential and privileged infomiation. Any unaLnlnariu:d review,
`use, disclosure, or distribution is prolfibited. If you are not the intended recipient, please contact the sender at the number listed above and
`destiny all copies of the original facsimile.
`
`PAGE 1/8 ' RCVD AT 2l11!2010 3:26:04 PM [Easlem Standard Time] ‘ SVR:USPTO-EFXRF-5f27 " DNlS:2738300 " CSlD:619 238 4959 " DURATION (mm-ss):02-18
`
`Apple, Exhibit 1012, Page 819
`
`Apple, Exhibit 1012, Page 819
`
`

`
`_
`.
`.
`02/11/2010 12:22 FAX
`
`619 238 4959
`
`r-xECEl\.lED
`_
`‘EP
`MAZZARELLA cALo¢;ga1SBP«L$m{CEm
`rte 1 1 2010
`
`002/003
`
`Prolsam (07-us)
`Approved for use through 07/31/2012. OMB 0651-0031
`US. Patent and Trademark Office; U.$. DEPARTMENT OF COMMERCE
`Under the Paerwonc Reduction Act of 1995 no - rsons are reuirod to re - nd toe collodion of information unless it disla 5 a valid OMB control number.
`Docket Number (Optional)
`
`
`
`
`
`‘l004293.005US
`
`NOTICE OF APPEAL FROM THE EXAMINER TO
`THE BOARD OF PATENT APPEALS AND INTERFERENCES
`
`
`
`
`
`Filed
`April 22, 2005
`
`For Information Management and synchronous Comrrunications System
`Examiner
`
`In ne Application of
`McNaIly, et al.
`Application Number
`, 11/112,990
`
`
`
`
`
`
`
`
`I hereby certify that this correspondence is being facsimile transmitted
`
`to the USPTO or deposited with the United States Postal Service with
`sufficient postage as first class mail in an envelope addressed to
`“Commissioner for Patents, P.O. Box 1450. Alexandria, VA 22313-
`On
`‘I450"'[37 CFR'1.8(a)] February
`
`
`
`
`
`TV?“ °' P’I"'I'3" Michael D. Fabiano
`nafne
`
`Brophy, Matthew
`
`Applicant hereby appeals to the Board of Patent Appeals and interferences from the last decision of the examiner.
`
`'
`The fee for this Notice of Appeal Is (37 CFR 41.20(b)(1))
`
`0.00
`S5_0_.__
`
`D Applicant claims small entity status. See 37 CFR 1.27. Therefore, the fee shown above is reduced
`by half, and the resulting fee is:
`A check in the amount of the fee is enclosed.
`
`S
`
`Payment by credit card. Form PTO-2038 is attached.
`
`The Director has already been authorized to charge fees in this application to a Deposit Account.
`
`CIEIEJHEI A petition for an extension of time under 37 CFR 1.1 36(a) (PTOISBI22) is enclosed.
`
`The Director is hereby authorized to charge any fees vmlch may be required, or credit any overpayment
`to Deposit Account No.
`.
`
`WARNING: lnfomtatlon on this form may become public. Credit card information should not
`be Included on this form. Provide credit card information and authorization on PTO-2038.
`
`I am the
`
`D applicantllnventor.
`
`.
`.
`D :::g3r;eggI2r§(.:;)1n.I§1IaItI;?n:IrIIIt:IIiI:r§§IcFR 3.73(b) is enclosed.
`(Form PTOISBIBS)
`
`'
`Signature
`MI°ha°' [1 FabIa"°
`Typed or printed name
`
`I attorney or agent of record.
`
`44,675
`_
`(619) 233-4900
`I R°m_u°n MW
`Telephone number
`
`FR .
`‘
`1 34
`altomey or agent acting under 37 C
`Registration number if acting under 37 CFR 1.34.
`
`.
`
`February 1 1' 2010
`Date
`
`NOTE: Signatures of all the inventors or asslgnees of record of the entire interest or their representa