`
`DocketNo. 3125-4002US1
`
`Express Mail No. EL606933364US
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`o
`o (cid:9)
`1,-- (cid:9)
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`c
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`27123
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`PATENT _TRADEMARK OFFICE
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`IsAFFIX CUSTOMER NO. LABEL ABOVE T
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`crkw-
`r._—
`0144_------
`t
`jet=----78
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UTILITY APPLICATION AND FEE TRANSMITTAL §(1.53(b))
`
`Commissioner for Patents
`Box Patent Application
`Washington, D.C. 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
`
`For: INFORMATION MANAGEMENT AND SYNCHRONOUS COMMUNICATIONS
`SYSTEM WITH MENU GENERATION
`
`Enclosed Are:
`
`27 (cid:9)
`1 (cid:9)
`20 (cid:9)
`6 (cid:9)
`6 (cid:9)
`
`page(s) of specification
`page(s) of Abstract
`page(s) of claims
`Z Formal Ej Informal drawings
`sheets (Figs. 1-7) of (cid:9)
`page(s) of Declaration and Power of Attorney
`
`II] Unsigned
`q Newly Executed
`Z Copy from prior application
`q Deletion of inventors including Signed Statement under 37 C.F.R. §1.63(d)(2)
`
`660999 vl
`
`Apple, Exhibit 1011, Page 1
`
`
`
`Docket No. 3125-4002US1
`
`EA
`
`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`attached application NOT be published under 35 U.S.C. §122(b).
`
`•
`
`Incorporation by Reference:
`
`N 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.
`Deletion of Inventors (37 C.F.R. §1.63(d) and §1.33(b)
`
`El (cid:9)
`
`Signed statement attached deleting inventor(s) named in the prior application serial no.
`filed
`
`q
`
`Microfiche Computer Program (Appendix)
`
`Z (cid:9)
`
`ri (cid:9)
`
`q
`
` page(s) of Sequence Listing
`q computer readable disk containing Sequence Listing
`El Statement under 37 C.F.R. §1.821(f) that computer and paper copies of the Sequence
`Listing are the same
`
`Assignment Papers (assignment cover sheet and assignment documents)
`Fi A check in the amount of $40.00 for recording the Assignment
`q Charge the Assignment Recordation Fee to Deposit Account No. 13-4500, Order
`No. (cid:9)
`
`E] 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:
`, in (cid:9)
`, filed (cid:9)
`Application No(s). (cid:9)
`q Certified Copy of Priority Document(s) [ (cid:9)
`q filed herewith
`11 filed in application Serial No. (cid:9)
`O English translation document(s) [ (cid:9)
`
`q filed herewith
`q filed in application Serial No. (cid:9)
`
`(country).
`
`
`
`, filed (cid:9)
`
`, filed (cid:9)
`
`
`
`
`
`q
`
`Priority is claimed under 35 U.S.C. §119(e) for:
`, filed (cid:9)
`
`Provisional Application No. (cid:9)
`
`660999 vl
`
`-2-
`
`Apple, Exhibit 1011, Page 2
`
`(cid:9)
`(cid:9)
`
`
`q
`
`n (cid:9)
`
`El (cid:9)
`El (cid:9)
`El (cid:9)
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`•
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`q
`
`q
`
`q
`
`Docket No. 3125-4002US1
`
`Information Disclosure Statement
`q Copy of [ (cid:9)
`] cited references
`n PTO Form-1449
`n References cited in parent application Serial No. (cid:9)
`
`, filed
`
`, filed (cid:9)
`
`
`
`Related Case Statement under 37 C.F.R. §1.98(a)(2)(iii)
`q A copy of related pending U.S. Application(s) Serial No(s): (cid:9)
`respectively, is attached hereto.
`q A copy of related pending U.S. Application(s) entitled, (cid:9)
`inventor(s) (cid:9)
`, respectively, is attached hereto.
`A copy of each related application(s) was submitted in parent application serial no.
`
`, filed (cid:9)
`Preliminary Amendment
`
`, filed (cid:9)
`
`to
`
`Return receipt postcard (MPEP 503)
`This is a El continuation q divisional q continuation-in-part of prior application
`serial no. 09/400,413, filed September 21 1999, to which priority under 35 U.S.C. §120
`is claimed.
`7 Cancel in this application original claims (cid:9)
`of the parent application before
`calculating the filing fee. (At least one original independent claim must be retained
`for filing purposes.)
`Z 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).
`
`The status of the parent application is as follows:
`q 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 (cid:9)
`
`[I A copy of the Petition for Extension of Time in the co-pending parent application is
`attached.
`El No Petition for Extension of Time and Fee therefor are necessary in the co-pending
`parent application.
`
`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:
`continuation q divisional q continuation-in-part of co-pending application
`This (cid:9)
`Serial No. (cid:9)
`, filed (cid:9)
`
`
`660999 vi
`
`-3-
`
`Apple, Exhibit 1011, Page 3
`
`(cid:9)
`
`
`Docket No. 3125-4002US1
`
`I. CALCULATION OF APPLICATION FEE
`
`Number Filed
`
`Number Extra
`
`Rate
`
`Basic Fee
`$740.00/370.00
`
`Total Claims*
`
`Independent Claims
`
`102- 20 =
`
`13- 3 =
`
`82x
`
`10x
`
`$18.00/ $9.00
`
`$ 738.00
`
`$84.00/ $42.00
`
`$ 420.00
`
`4 Multiple Dependent
`Claims
`If marked, add fee of $280.00 ($140.00)
`* Reflects total number of claims for fee purposes, with multiple dependent claims
`being counted according to 37 C.F.R. §1.75(c)
`
`$ 140.00
`
`TOTAL:
`
`$ 1668.00
`
`IZI (cid:9)
`0 (cid:9)
`
`EA (cid:9)
`
`Small entity status is or has been claimed. Reduced fees under 37 C.F.R. §1.9 (f) 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. (cid:9)
`OF THIS SHEET IS ATTACHED.
`
`. A DUPLICATE COPY
`
`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. 3125-
`4002US1. A DUPLICATE COPY OF THIS SHEET IS ATTACHED.
`
`Respectfully submitted,
`MORGAN & FINNEGAN, L.L.P.
`
`W. Osborne
`egistration No. 36,231
`
`Dated: November 1, 2001 (cid:9)
`
`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 vl
`
`-4-
`
`Apple, Exhibit 1011, Page 4
`
`
`
`Docket No. 3125-4002US1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant(s): McNally et al.
`
`Serial No.:
`Filed: (cid:9)
`
`For: (cid:9)
`
`Continuation of 09/400,413
`
`Herewith
`
`Group Art Unit: 2173 (parent case)
`
`Examiner: (cid:9)
`
`Cao Nguyen (parent caer—W"
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS COMMUNICATIONS
`SYSTEM WITH MENU GENERATION
`
`EXPRESS MAIL CERTIFICATE
`
`Express Mail Label No.: (cid:9)
`
`EL606933364US
`
`Date of Deposit: (cid:9)
`
`November 1, 2001
`
`I hereby certify that the following attached paper(s) and/or fee
`
`1. Utility Application and Fee Transmittal Form;
`2. Combined Declaration and POA;
`3. Preliminary Amendment;
`4. Check in the amount of $1,668.00;
`5. Patent Application (Specs. 26 pgs., Claims 20 pgs. Abstract 1 pg.)
`6. Formal Drawings (6 sheets - Figs. 1-7)
`5. Return Receipt Postcard.
`
`is being deposited with the United States Postal Service "Express Mail Post Office to Addressee"
`service under 37 C.F.R. §1.10 on the date indicated above and is addressed to BOX CPA,
`Commissioner for Patents, Washington, D.C. 20231.
`
`Jesus Raul Remedios
`(Typed or printed name of person mai
`
`(Signature of
`
`aper(s) and/or fee
`
`Correspondence Address:
`MORGAN & FINNEGAN, L.L.P.
`345 Park Avenue
`New York, NY 10154-0053
`(212) 758-4800 Telephone
`(212) 751-6849 Facsimile
`
`661254 v1
`
`Apple, Exhibit 1011, Page 5
`
`(cid:9)
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICANTS: (cid:9)
`
`McNally et al. (cid:9)
`
`GROUP ART UNIT:2173 (parent case)
`
`SERIAL NO.: (cid:9)
`
`Continuation of 09/400,413 EXAMINER: Cao Nguyen (parent case)
`
`FILED: (cid:9)
`
`FOR: (cid:9)
`
`HEREWITH
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS
`COMMUNICATIONS SYSTEM WITH MENU GENERATION
`
`COMMISSIONER FOR PATENTS
`Washington, D.C. 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. 3125-4002US1.
`
`IN THE CLAIMS
`
`Please add new claim 93 as follows.
`
`93. (cid:9)
`
`(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. (cid:9)
`
`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
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`Apple, Exhibit 1011, Page 6
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`
`
`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.
`
`II. (cid:9)
`
`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(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 vl
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`Apple, Exhibit 1011, Page 7
`
`
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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 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 synchronized
`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 vl
`
`1' '
`
`Apple, Exhibit 1011, Page 8
`
`
`
`(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, affinity program companies and internet
`content providers to fully 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
`synch with the central database."
`(see disclosure, p. 7 ln. 21 — p. 8 ln. 4; emphasis added)
`
`As another example, the disclosure of the present invention notes that
`
`according to such synchronization:
`
`,4 ... 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 ln. 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 1011, Page 9
`
`
`
`III. (cid:9)
`
`Rejections Under 35 U.S.C. 103(a)
`
`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 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:
`
`" ... 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 1011, Page 10
`
`
`
`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 vl
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`Apple, Exhibit 1011, Page 11
`
`
`
`IV. (cid:9)
`
`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. 3125-4002US1. 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)
`
`W. • s orne
`g. No. 36,231
`
`659742 vl
`
`Apple, Exhibit 1011, Page 12
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICANTS: (cid:9)
`
`McNally et al. (cid:9)
`
`GROUP ART UNIT:2173 (parent case)
`
`SERIAL NO.: (cid:9)
`
`Continuation of 09/400,413 EXAMINER: Cao Nguyen (parent case)
`
`FILED: (cid:9)
`
`FOR: (cid:9)
`
`HEREWITH
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS
`COMMUNICATIONS SYSTEM WITH MENU GENERATION
`
`COMMISSIONER FOR PATENTS
`Washington, D.C. 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. 3125-4002US1.
`
`IN THE CLAIMS
`
`Please add new claim 93 as follows.
`
`93. (cid:9)
`
`(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. (cid:9)
`
`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 1011, 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 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.
`
`II. (cid:9)
`
`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(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,
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`Cupps discloses information synchronization involving a second or modified menu. However
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`Applicants respectfully disagree.
`
`The first section cited by the examiner, column 9 lines 35-65, fails to
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`disclose information synchronization involving a second or modified menu, nor any other sort of
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`information synchronization. This section instead discloses a customer providing to an online
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`ordering machine registration information, location information, time of day information, and an
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`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
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`online ordering machine via a network, and telephone and fax components connected to the
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`online ordering machine via standard telephone lines. Also shown are various elements of the
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`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
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`659742 vi
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`Apple, Exhibit 1011, Page 14
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`
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`modified menu. More generally, there is no disclosure of information synchronization occurring
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`between any components of the system, nor is there disclosure of any other sort of information
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`synchronization.
`
`The third section cited by the examiner, Figs. 3a-3f, fails to disclose
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`synchronization involving a second or modified menu and instead discloses the "schema" — that
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`is the organization and structure — of the order database 128 (see Cupps, Col. 5 Ln. 21). Nowhere
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`in the figures or in the corresponding disclosure is there even any indication that the order
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`database is involved in any sort of information synchronization. In fact, there is no disclosure of
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`any sort of information synchronization in this section.
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`Furthermore, the remainder of the Cupps disclosure also fails to disclose
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`synchronization involving a second or modified menu, nor any other sort of information
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`synchronization.
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`claim 1 wherein:
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`Accordingly, Cupps fails to disclose at least the aspect of independent
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`"... 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 synchronized
`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
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`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 vl
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`Apple, Exhibit 1011, Page 15
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`
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`(emphasis added) (cid:9)
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`'
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`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, affinity program companies and internet
`content providers to fully 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
`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
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`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. 81n. 13-16; emphasis added)
`
`In light of the above, Applicants submit that independent claims 1, 12, and
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`20 are in condition for allowance. As claims 2-11, 13-19, 21-28, 35-39, 49-68, and 84-92 depend
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`therefrom, these claims, for at least the above-identified reasons, are also thought to be
`
`allowable.
`
`659742 vi
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`Apple, Exhibit 1011, Page 16
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`
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`III. (cid:9)
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`Rejections Under 35 U.S.C. 103(a)
`
`In the parent application the Examiner rejected claims identical to
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`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 .
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`Applicants therefore submit that Cups and Behr, alone or in combination,
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`fail to disclose, teach, or suggest at least the aspect of independent claim 29 wherein:
`
`"... 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:
`
`" ... 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
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`659742 v I
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`Apple, Exhibit 1011, Page 17
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`
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`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.
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`37-44). Behr also discloses that other specifiable destinations include "airport[s]" and
`
`"museum[sr (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 vl
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`Apple, Exhibit 1011, Page 18
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`
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`IV. (cid:9)
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`Conclusion and Authorization
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`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. 3125-4002US1. 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)
`
`W. • sortie
`g. No. 36,231
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`659742 vl
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`.t
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`EXPRESS MAIL CERTIFICATE NO. EL606933364US
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`Attorney Docket No. 3125-4002US1
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`1 (cid:9)
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`2 (cid:9)
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`3 (cid:9)
`4 (cid:9)
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`5
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`6
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`7
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`4r7
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` 8 (cid:9)
`9 (cid:9)
`r 10
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`UNITED STATES PATENT APPLICATION
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`For:
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`INFORMATION MANA