IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant
`
`Serial No.
`
`Filed
`
`For
`
`McNally et a!.
`
`09/400,413
`
`September 21, 1999
`
`Group Art Unit:
`
`2173
`
`Examiner
`
`Cao Nguyen
`
`INFORMATION MANAGEMENT AND SYNCHRO <OUS
`COMMUNICATIONS SYSTEM WITH MENU G I~N liRA TION
`
`AMENDMENT
`
`Assistant Commissioner for Patents
`Washington, D.C. 20231
`
`Sir:
`
`In response to the Office Action dated November 29, 2000, please amend the
`
`above-identified application as follows:
`
`IN THE CLAIMS
`
`Please amend claims I, 12 and 31 and add new claims 44-57 as follows:
`
`(amended) An information management and synchronous communications
`
`system for generating enus comprising:
`
`central processing unit,
`torage device c~ected to said central
`/Yf2Cf21'vf2D
`a dat
`J7
`Mill( O
`process!
`unit,
`8
`tern including a graphical u!G&hnotag
`lOOt
`'Y Center 2l
`00
`
`a first menu stored on
`
`· d data storage device,
`
`an operating s
`interface,
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`application software for ge
`from said first menu,
`
`ating a second menu
`
`.03/05/2001 MYUSUF! 00000045 09400413
`01 FC:20J
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`
`601142_1
`
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`
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`
`I •
`
`Starbucks Corp. Exhibit 1016
`
`

`

`' PATENT
`
`ATTORNE\ _JCKETNO.: 3125-4002USI
`
`wherein the application software
`
`the generation of the second menu by allowing
`
`~ ~election of ite~s fro~ the first menu, a
`)eJ\1\
`
`parameters to ttems m the second menu usin
`
`ition of it
`
`s to the second menu and assigrunent of
`
`graphical user interface of said operating
`
`12. (amended) An information management and synchronous communications
`
`system for generating
`
`a microprocessor,
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`ta and instruction input device,
`
`a dat storage device for storing information and
`instruc · ons entered through said data and
`instructi
`input means or information generated by
`said micr
`rocessor,
`
`a master menu ored on said data storage device for
`ed menu, and
`generating a mo
`
`application softwar
`
`wherein said microprocessor, operating system and
`
`plication software are operative to display
`
`the master menu on the display device in respons
`
`to instructions programmed into said
`
`microprocessor, operating system, application software
`
`d information and instructions entered
`
`through said data input device, and wherein said mic processor, operating system and
`
`application software are operative to create the modified
`
`enu from said master menu in
`
`response to information and instructions entered through said d a and instruction input device
`
`and at least one other computing device.
`
`601142_1
`
`-2-
`
`r
`
`Starbucks Corp. Exhibit 1016
`
`

`

`. PATENT
`
`ATTORNE\ .A>CKETNO.: 3125-4002USI
`
`. (amended) In a computer system having an input device, a storage device, a
`
`video display, an op ating system including a graphical user interface and application software,
`
`an information managem
`
`t and synchronous communications method comprising the steps of:
`
`!putting at least one window on the video display;
`
`ting a first menu in a window on the video
`outp
`displa ,
`
`displaying cursor on the video display;
`
`om the first menu with the input
`hical user interface;
`
`lected from the first menu into
`inserting the items
`a second menu, the se ond menu being output in a
`{!.._.,
`window;
`optionally adding addition ~s not included in
`the first menu to the second enu using the input
`device or the graphical user in rface; [and]
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`h.
`
`(new) An information management and synchronous communications system
`
`for use with wireless
`
`andbeld computing devices and hospitality computing systems
`
`comprising:
`
`601142_1
`
`a.
`
`b.
`
`c.
`
`d.
`
`a central da base containing hospitality
`applications
`data,
`
`andbeld computing device on
`at least one wireles
`which hospitality app · ations and data are stored or
`displayed,
`
`an application program inter
`
`e, and
`
`a communications control modul
`
`-3-
`
`I'
`
`I i
`
`Starbucks Corp. Exhibit 1016
`
`

`

`- PATENT
`
`ATTORNE\ ~OCKETNO.: 3125-4002USI
`
`wherein apphc ions or data are synchronized wirelessly between the central database and at
`
`least one wireless andheld computing device and wherein the applications program interface
`
`and communications
`
`ntrol module establish a seamless link. between the data in the central
`
`database and the data on e wireless handheld computing device.
`
`45. (new) The 'nformation management and synchronous communications system
`
`of claim 44 wherein the comm
`
`ications control module and the application program interface
`
`enable the automatic generation o and updating of operator menus or screens on the handheld
`
`computer based on data from the cen a! hospitality database.
`
`46. (new) The informati management and synchronous communications system
`
`of claim 45 wherein messaging formats
`
`e used which are in conformity with HTML or XML
`
`messaging formats.
`
`for use with wireless handheld computing devices d hospitality applications comprising:
`
`ent and synchronous communications system
`
`a central database conta' ing hospitality
`applications and data,
`
`at least one wireless comp
`
`at least one wireless paging r beeper device,
`
`an applications program inter ce, and
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`wherein hospitality applications or data are synchronized be
`
`en the central database, at least
`
`one wireless computing device and at least one wireless pagin or beeper device and wherein
`
`messaging to the wireless paging or beeper device is enabled direc ly from the operator interface
`
`of the wireless computing device.
`
`601142_1
`
`-4-
`
`,,
`i,
`! .. '
`,: ,,
`I
`
`Starbucks Corp. Exhibit 1016
`
`

`

`PATENT
`
`ATIORNE'Y ~DCKETNO.: 3125-4002USI
`
`) An information management and synchronous communications system
`
`compnsmg:
`
`a.
`
`b.
`
`c.
`
`a central database containing applications and data,
`
`first computing device associated with the central
`d tabase,
`
`a se ond computing device associated with a second
`stora e medium containing applications and data,
`
`d.
`
`an appl ations program interface, and
`
`wherein applications or data are sync onized between the central database and the second
`
`storage medium and wherein the applica · ons program interface and communications control
`
`module establish a seamless link between
`
`e data in the central database and the data on the
`
`second storage medium.
`
`~
`
`49. (new) The information mana ement and synchronous communications system
`
`of claim 48 wherein the communications contro module and the applications program interface
`
`enable the automatic generation of and updating of operator menus or screens on the second
`
`computing device based on data from the central da abase.
`
`50. (new) The information managem
`
`t and synchronous communications system
`
`of claim 1 wherein the second menu is generated . y manually selecting items from the first
`
`menu, adding items to the second menu or assigning p ameters to items in the second menu.
`
`51. (new) The information management d synchronous communications system
`
`of claim 1 wherein the data is synchronized by digita transmission between the data storage
`
`device cormected to the central processing unit and at leas one other computing device.
`
`52. (new) The information management and synchronous communications system
`
`of claim 12 wherein the modified menu is generated by man ally selecting items from the master
`
`menu.
`
`601142_1
`
`-5-
`
`Starbucks Corp. Exhibit 1016
`
`

`

`PATENT
`
`ATTORNE\ ... JCKETNO.: 3125-4002US1
`
`53. ( w) The information management and synchronous communications system
`
`(of claim 12 wherein the ata is synchronized by digital transmission between the data storage
`
`(device and at least one other c puting d7e.
`
`/
`
`54. (new) The comp
`
`r s}s(em of claim 31 wherein the data is synchronized by
`
`-- 1 ~(new) The information management and synchronous communications system
`
`, digital transmission between the storage Yice and at least one other data storage medium.
`
`1/:
`of claim f0" wherein the applications and data are synchronized by digital data transmission
`
`between the central database, at least one wireless handheld computing device, at least one Web
`
`server and at least one Web page.
`
`56. (n w) The information management and synchronous communications system
`
`of claim. 44 wherein th
`
`pplications or data are synchronized by digital data transmission
`
`between the central database
`
`at least one ~t_less handheld computing device.
`
`57. (new) The inform
`
`·on mrulag?ement and synchronous communications system
`
`of claim 47 wherein the applications or ata are synchronized by digital data transmission
`
`between the central database, at least one wire!
`
`computing device and at least one wireless
`
`paging or beeper device.
`
`REMARKS
`
`By the present amendment, claims 1, 12 and 31 are amended. Claims 20-30 and
`
`40-43 were allowed. New claims 44-57 have been added. Claims 1-57 are now pending. No
`
`new matter has been added.
`
`Claims 1-19 and 31-39 were rejected under 35 U.S.C. 102(e) as anticipated by
`
`Cupps eta!. U.S. Patent No. 5,991,739. Claims 1, 12 and 31 have been amended to further recite
`
`that the data comprising the second or modified menu is synchronized between the data storage
`
`device connected to the central processing unit and at least one other computing device. Cupps
`
`601142_1
`
`~-
`
`-6-
`---2 ,/
`;?5
`
`r I I
`
`l ,,
`
`Starbucks Corp. Exhibit 1016
`
`

`

`PATENT
`
`ATTORNEl: _jCKETNO.: 3125-4002USI
`
`describes the dynamic creation of menu web pages that are customized to a customer's request.
`
`(See, e.g., col. 9, lines 3-7). However, Cupps does not describe the synchronization of generated
`
`menus between different databases or computing devices. As a matter of fact, Cupps describes
`
`data transmission via phone or fax (e.g., col.l 0, lines 26-42) precisely because Cupps did not
`
`appreciate what Applicants describe and claim, i.e., real-time synchronization of data on
`
`different computers or databases. Claims 1, 12 and 31 as amended are thus believed to be
`
`patentably distinguishable over Cupps.
`
`Claims 2-11, 13-19 and 32-39 further contribute to the claiming of the invention
`
`because they are directed to further aspects of the claimed device. Claims 2-11, 13-19 and 32-39
`
`depend from claims 1, 12 or 31. With the amendments to claims 1, 12 and 31, it is respectfully
`
`submitted that claims 2-11, 13-19 and 32-39 are now allowable.
`
`New claims 44-57 recite further aspects of the invention which Applicants are
`
`entitled to claim. Claims 44-49 find support in the specification, e.g., at page 21, lines 8-10 and
`
`14-15; page 20, line 8- page 21, line 3 and page 25, line 10- page 26, line 8. Support for new
`
`claims 50 and 52 is found, e.g., at p. 12, line3- page 15, line 25. Support for new claims 51 and
`
`53-57 is found, e.g., at page I, line 17 and p. 2, lines 2-3. No new matter has been added.
`
`Applicants respectfully submit that new claims 44-57 are distinguishable and patentable over the
`
`prior art of record.
`
`To avoid any negative inference, Applicants state for the record that they
`
`respectfully disagree with the Examiner's statements with regard to claims 1-19 and 31-39 that
`
`Cupps discloses a synchronous communications system. Applicants further disagree with the
`
`Examiner's statements with respect to claims 8 and 16 that Cupps discloses creating the second
`
`menu in conformity with extensible markup language. In any event, claims 1-19 and 31-39 as
`
`amended are asserted to be patentable over the prior art of record as discussed above.
`
`601142_1
`
`-7-
`
`,r \ j \
`/
`
`Starbucks Corp. Exhibit 1016
`
`

`

`PATENT
`
`ATTORNEJ: -JCKETNO.: 3125-4002US!
`
`describes the dynamic creation of menu web pages that are customized to a customer's request.
`
`(See, e.g., col. 9, lines 3-7). However, Cupps does not describe the synchronization of generated
`
`menus between different databases or computing devices. As a matter of fact, Cupps describes
`
`data transmission via phone or fax (e.g., col.l 0, lines 26-42) precisely because Cupps did not
`
`appreciate what Applicants describe and claim, i.e., real-time synchronization of data on
`
`different computers or databases. Claims I, 12 and 31 as amended are thus believed to be
`
`patentably distinguishable over Cupps.
`
`Claims 2-11, 13-19 and 32-39 further contribute to the claiming of the invention
`
`because they are directed to further aspects of the claimed device. Claims 2-11, 13-19 and 32-39
`
`depend from claims I, 12 or 31. With the amendments to claims 1, 12 and 31, it is respectfully
`
`submitted that claims 2-11, 13-19 and 32-39 are now allowable.
`
`New claims 44-57 recite further aspects of the invention which Applicants are
`
`entitled to claim. Claims 44-49 find support in the specification, e.g., at page 21, lines 8-10 and
`
`14-15; page 20, line 8- page 21, line 3 and page 25, line 10- page 26, line 8. Support for new
`
`claims 50 and 52 is found, e.g., at p. 12, line 3 -page 15, line 25. Support for new claims 51 and
`
`53-57 is found, e.g., at page 1, line 17 and p. 2, lines 2-3. No new matter has been added.
`
`Applicants respectfully submit that new claims 44-57 are distinguishable and patentable over the
`
`prior art of record.
`
`To avoid any negative inference, Applicants state for the record that they
`
`respectfully disagree with the Examiner's statements with regard to claims 1-19 and 31-39 that
`
`Cupps discloses a synchronous communications system. Applicants further disagree with the
`
`Examiner's statements with respect to claims 8 and 16 that Cupps discloses creating the second
`
`menu in conformity with extensible markup language. In any event, claims 1-19 and 31-39 as
`
`amended are asserted to be patentable over the prior art of record as discussed above.
`
`60ll42_1
`
`-7-
`
`Starbucks Corp. Exhibit 1016
`
`

`

`PATENT
`
`ATTORNE'¥- JCKETNO.: 3125-4002US1
`
`It is therefore respectfully submitted that the invention as now claimed in rejected
`
`claims 1-19 and 31-39 and new claims 44-57 is patentable over the cited references and those
`
`claims are in condition for allowance. Accordingly, reconsideration and withdrawal of the
`
`rejection of claims 1-19 and 31-39 and allowance of the pending claims, being claims 1-57, is
`
`Respectfully submitted,
`Morgan & Finnegan, L.L.P.
`
`respectfully requested.
`
`Date: February 26,2001
`
`Mailing Address:
`MORGAN & FINNEGAN, L.L.P.
`345 Park A venue
`New York, NY 10154-0053
`TELEPHONE: 212-758-4800
`TELECOPIER: 212-751-6849
`
`601142_1
`
`-8-
`
`Starbucks Corp. Exhibit 1016
`
`

`

`PATENT
`
`Docket No.
`
`3125-4002US I
`
`Applicant(s)
`
`Serial No.
`
`Filed
`
`For
`
`IN THE l JNITED SIATES PATENT AND TRADEMARK OFFICE
`
`McNally eta!.
`
`09/400,413
`
`September 21, 1999
`
`Group Art Unit: 2173
`
`Examiner: Cao Nguyen
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS
`COMMUNICATIONS SYSTEM WITH MENU GENERATION
`
`AMENDMENT FEE IRANSMITTAL
`
`ASSISTANT COMMISSIONER FOR PATENTS
`Washington, D.C. 20231
`
`Sir:
`
`Transmitted herewith is an Amendment for the above-identified application.
`
`[ ]
`
`No additional fee is required.
`
`[ X ]
`
`The additional fee has been calculated as shown below:
`
`Claims
`Remaining
`After
`Amendment
`
`57
`
`8
`
`CLAIMS AS AMENDED
`
`Highest No.
`Covered by
`Previous
`Payments
`
`Present
`Extra
`
`Rate
`
`43
`
`5
`
`= 14
`
`X $18.00
`
`=3
`
`X $80.00
`
`(If claims added by amendment include
`Multiple Dependent Claim( s) and there
`was not Multiple Dependent Claims(s)
`in application before amendment add
`$270.00 to additional fee.)
`
`Total: $ill.Ql!
`
`Total"
`Claims
`
`Independent
`Claims
`
`Multiple
`Dependent
`Claim(s)
`
`[X]
`
`Statement of"Small Entity" Status Under 37 CPR§ 1.27 filed September 21 !999
`Reduced Fees Under 37 CPR§ 1.9(1) (50% of total) paid herewith.
`
`$_MM!i.
`
`Includes all independent and single dependent claims and all claims referred to in multiple dependent
`claims. See 37 C.P.R.§ 1.75(c).
`
`602176_1
`
`,,
`i ' I
`I~
`I
`I
`
`Starbucks Corp. Exhibit 1016
`
`

`

`Docket No. 3125-4002US1
`
`Charge fee to Deposit Account No. 13-4500. Order No . - - - - - - - - (cid:173)
`A DUPLICATE COPY OF THIS SHEET IS ATTACHED.
`
`The Assistant Commissioner is hereby authorized to charge any addition:. I fees which may be required for
`this amendment, including all fees pursuant to 37 C.F.R. § 1.17 for its 111ndy consideration, or credit any
`overpayment to Deposit Account No. 13-4500. Order No. 3125-4002\ '01
`A DUPLICATE
`COPY OF THIS SHEET IS ATTACHED.
`
`__ Page( s) of substitute Sequence Listing
`
`__ Computer disk(s) containing substitute Sequence Listing
`
`Statement under 37 C.F.R. § 1.825(b) that the computer and paper copies of the substitute Sequence Listing
`are the same.
`
`[ ]
`
`[X]
`
`[ ]
`
`[ ]
`
`[ ]
`
`[ X ]
`
`A check in the amount of $lli.l!Q to cover the filing fee is attached.
`
`Respectfully submitted,
`
`MORGAN & FINNEGAN, L.L.P.
`
`By:~a:v.o~
`
`John W. Osborne
`Reg. No. 36,231
`
`Daied: February 26, 2001
`
`CORRESPONDENCE ADDRESS:
`
`MORGAN & FINNEGAN, L.L.P.
`345 Park Avenue
`New York, New York 10154
`(212) 758-4800
`(212) 751-6849 Facsimile
`
`FORM: AMD-TRAN.NY
`Rev. 10/01/00
`
`602176_1
`
`- 2-
`
`Starbucks Corp. Exhibit 1016
`
`

`

`GA-u
`;2:/(13
`/J·
`
`!locket No. 3 125-4002US I
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant(s)
`
`McNally eta!.
`
`Serial No.
`
`09/400,413
`
`Group Art Unit: 2173
`
`Filed
`
`For
`
`September 2 I, I 999
`
`Examiner: Cao Ng11yen
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS
`COMMUNICATIONS SYSTEM WITH MENU GENERATION
`
`CERTIFICATE OF MAILING 137 C F R. I 8a)
`
`ASSISTANT COMMISSIONER FOR PATENTS
`Washington, D.C. 20231
`
`Sir:
`
`I hereby certify that the attached Amendment Fee Transmittal; Amendment; Check for $188.00;
`
`Check for $58.00; and Postcard.
`
`along with any paper( s) referred to as being attached or enclosed and this Certificate of Mailing are being deposited
`
`with the United States Postal Service on date shown below with sufficient postage as first-class mail in an envelope
`
`addressed to the: Assistant Commissioner for Patents, Washington, D.C. 20231.
`
`Respectfully submitted,
`
`MORGAN & FINNEGAN, L.L.P.
`
`~~0~.0~~
`
`Reg. No. 36,231
`
`RF2cf211/f2D
`MAR o 8
`lee"
`2001
`'iflOiog_
`'YCenter2 7oa
`
`Dated: February 26, 200 I
`
`CORRESPONDENCE ADDRESS:
`MORGAN & FINNEGAN LLP
`345 Park Avenue
`New York, New York 10154
`(212)758-4800
`(212) 751-6849 Facsimile
`
`FORM: CERT .. NY
`Rev. 05/27/98
`
`602254_1
`
`Starbucks Corp. Exhibit 1016
`
`