PATENT OWNER
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`PATENT OWNER
`EXHIBIT 2024
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`EXHIBIT 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`UNITED S 'ATE l EPARTMENT OF COMMERCE
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`
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`APPLICATION NO.
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`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET No.
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`CONFIRMATION NO.
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`09/897,292
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`06/29/200l
`
`Gerald I. Cohen
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`COHEOOOZ
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`I998
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`LAW OFFICES OF RONALD M ANDERSON
`600 108TH AVE, NE
`sumssov
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`BELLEVUE, WA 98004
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`VAUGHN, GREGORY)
`
`2l78
`
`DATE MAILED: Ol/l 1/2006
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`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
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`

`

`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`09/897,292
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`COHEN. GERALD |.
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`Examine,
`
`Gregory J. Vaughn
`
`A” Unit
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`2178 -
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(3).
`In no event however may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication. even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
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`1)IZ Responsive to communication(s) filed on 20 October 2005.
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`2a)IZ This action Is FINAL.
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`2b)[:] This action is non-final.
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`3)I:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`MIX Claim(s) L58 is/are pending in the application.
`
`4a) Of the above claim(s) _ is/are withdrawn» from consideration.
`5)I:I Claim(s) _ is/are allowed.
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`6)E Claim(s) 4_0-i8 is/are rejected.
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`7 D Claim(s)
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`8 I] Claim(s)
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`
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`is/are objected to.
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`are subject to restriction and/or election requirement.
`
`) )
`
`Application Papers
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`9):] The specification is objected to by the Examiner.
`10)|:I The drawing(s) filed on _ is/are: a)|] accepted or b)l:] objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`11)I:| The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)L—_| Acknowledgment is made ofa claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
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`a)[] All
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`b)E] Some * c)I:I None of:
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`1D Certified copies of the priority documents have been received.
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`2.I:I Certified copies of the priority documents have been received in Application No. __
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`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
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`1) El Notice of References Cited (PTO-892)
`2) E] Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`3) El Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)
`Paper No(s)/Mail Date
`.
`US. Patent and Trademark Office
`
`4) E] Interview Summary (PTO-413)
`Paper No(s)/Mai| Date. ——
`5) CI N°Ii°e 0f Informal Patent Applicatim (PTO-152)
`6) [:1 Other:
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`PTOL-326 (Rev. 7-05)
`
`Office Action Summary
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`Part of Paper No./Mail Date 20
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`

`

`Application/Control Number: 09/897,292
`Art Unit: 2178
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`Page 2
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`DETAILED ACTION
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`Action Background
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`1.
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`This action is
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`responsive to the applicant’s amendment,
`
`filed on
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`10/20/2005.
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`2.
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`Applicant has cancelled claims 1-39; amended claims 41, 47, 48, 52 and
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`54; and added new claims 57 and 58.
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`3.
`
`Claims 40-58 are pending in the case, claims 40, 52, 54 and 57 are
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`independent claims.
`
`Claim Rejections - 35 USC § 112
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`4.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112:
`
`“The specification shall contain a written description of the invention, and
`of the manner and process of making and using it,
`in such full, clear,
`concise, and exact terms as to enable any person skilled in the art to
`which it pertains, or with which it is most near/y connected,
`to make and
`use the same and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.”
`
`5.
`
`Claims 57 and 58 are rejected under 35 U.S.C. 112, first paragraph, as
`
`failing to comply with the written description requirement. The claims contains
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`subject matter, which was not described in the specification in such a way as
`
`to reasonably convey to one skilled in the relevant art that the inventor(s), at
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`the time the application was filed, had possession of the claimed invention.
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`

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`Application/Control Number: 09/897,292
`Art Unit: 2178
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`Page 3
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`6.
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`Regarding claim 57, the amendment filed 10/20/2005 adds the following
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`limitations: “each menu being configured to be displayed to a user in it’s
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`entirety at the same time” (preamble), “each database record comprising
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`sufficient data to enable said menu temp/ate modifier to generate a unique
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`menu based on said menu template and the data in each database record"
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`(first limitation), “enabling a user to select a unique database record” (second
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`limitation), “the unique database record corresponding to the previously
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`generated menu" (third limitation). The examiner has reviewed the originally
`
`filed specification, and has failed to find support for the added limitations.
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`Applicant
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`is required to cancel the new matter in response to this office
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`action.
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`Regarding claim 58, the amendment filed 10/20/2005 adds the following
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`limitations: “machine instructions, when executed by a processor,
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`further
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`cause the actuation of a specific key to execute an action". The examiner has
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`reviewed the originally filed specification, and has failed to find support for the
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`added limitations. Applicant is required to cancel the new matter in response
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`to this office action.
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`8.
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`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`“The Specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the applicant
`regards as his invention.”
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`

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`Application/Control Number: 09/897,292
`Art Unit: 2178
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`Page 4
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`9.
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`Claim 57 is rejected under 35 U.S.C. 112, second paragraph, as being
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`indefinite for failing to particularly point out and distinctly claim the subject
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`matter which applicant regards as the invention.
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`10.
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`The term “sufficient data” in claim 57 is a relative term, which renders the
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`claim indefinite. The term “sufficient data” is not defined by the claim, the
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`specification does not provide a standard for ascertaining the requisite
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`degree, and one of ordinary skill in the art would not be reasonably apprised
`
`of the scope of the invention. The term “sufficient data” renders the “database
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`record' limitation indefinite.
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`Claim Rejections - 35 USC § 102
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`11.
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`The following is a quotation of
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`the appropriate paragraphs of 35
`
`U.S.C. 102 that form the basis for the rejections under this section made in
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`this Office action:
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`“A person shall be entitled to a patent unless —
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`(e) The invention was described in (1) an application for patent, published
`under section 122(b), by another filed in the United States before the
`invention by the applicant for patent or (2) a patent granted on an
`application for patent by another filed in the United States before the
`invention by the applicant
`for patent, except
`that an international
`application filed under the treaty defined in section 351(a) shall have the
`effects for purposes of this subsection of an application filed in the United
`States only if the international application designated the United States
`and was published under Article 21(2) of such treaty in the English
`language.”
`-
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`

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`Application/Control Number: 09/897,292
`Art Unit: 2178
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`Page 5
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`12.
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`Claims 40—47, 51, 52 and 54 remain rejected under 35 U.S.C. 102(e) as
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`being anticipated by McNally et al. US Patent 6,384,850, filed 9/21/1999,
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`patented 5/7/2002 (hereinafter McNaIIy).
`
`13.
`
`Regarding independent claim 40, McNaIIy discloses a menu template, a
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`menu template modifier, and a menu database, where a menu is generated
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`by the modifier based upon the template and the data in the database.
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`McNally further discloses enabling a user to select a desired menu from the
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`menu database. McNaIly recites:
`
`“ The inventive approach also includes
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`templates for common modifiers that can be assigned to similar menu items.
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`The preferred embodiment also supports multiple databases, thus providing
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`for the creation and storing of different menu database on handheld devices
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`such as breakfast,
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`lunch or dinner menus. The user can then select the
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`appropriate database to reflect the time of day’ (column 10,
`
`lines 6-13).
`
`McNally discloses in Figure 7, displaying the menu to a user (see reference
`
`sign 16), so that the user can select from a plurality of menu items (menu
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`items are shown in Figure 7 as “Dessert”, Drinks", “Main”, “Pre\/’ etc.), where
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`a menu item has an event associated with it (shown as “Main”) and causing
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`the selected event to occur (in Figure 7, selecting the “Main" menu item would
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`cause the display to change to the main menu).
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`14.
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`Regarding dependent claim 41, McNaIly discloses the event as
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`displaying an additional menu (as described above).
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`

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`Application/Control Number: 09/897,292
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`Art Unit: 2178
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`Page 6
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`‘
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`15.
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`Regarding dependent claim 42, McNalIy discloses a
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`sequencer
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`component that determines in which a plurality of events should occur in
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`Figure 7 (shown as the tabs at the top of the figure labeled “Login”, “Checks",
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`“Order”, “View” and “Pay'). McNally further discloses the use of a timing
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`function in Figure 4 at reference sign 12 (shown as “Prep. Time”).
`
`16.
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`Regarding dependent claim 43, McNalIy discloses disabling sequencer
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`and timer events so that a user can navigate through a sequence of menus
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`more rapidly in Figure 7 (shown as the “Browse" button at the bottom of the
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`figure). The browse screen is shown in Figure 1 of McNalIy.
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`17.
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`Regarding dependent claim 44, McNalIy discloses a plurality of
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`database records that define a plurality of sequential menus in Figure 1 at
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`reference signs 2, 3 and 4 (shown as a “Menu Tree”). The Menu Tree shown
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`in Figure 1 of McNaIIy enables the use to select a sequence of menus (shown
`
`as “Menu" on the menu tree), a sequence of menu items (shown as “Entrees”
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`on the menu tree), by selecting a menu item (for instance “NY Strip”).
`
`18.
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`Regarding dependent claim 45, McNally discloses a tracker component
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`that records each menu item selected in Figure 7 (shown as “Select Guest to
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`Order for”).
`
`19.
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`Regarding dependent claim 46, McNalIy discloses the generation of a
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`report related to the items selected on a previous menu in Figure 4 (the report
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`

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`Application/Control Number: 09/897,292
`Art Unit: 2178
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`Page 7
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`shown in the figure would be generated upon a user selecting the “Chicken
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`Alaska” menu item in a previous menu).
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`20.
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`Regarding dependent claim 47, McNally discloses generating a report
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`that includes each previously selected menu item in Figure 7 (shown as the
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`tab labeled “View" at the top of the figure). The report could be used to
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`provide results of a questionnaire comprising the menu items displayed to the
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`user from which the user selected specific menu items.
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`21.
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`Regarding dependent claim 51, McNally discloses an editing function
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`with the menu template modifier that allows a user to edit a menu item in
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`Figure 2 at reference sign 2 (shown as editable text boxes in the figure).
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`22.
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`Regarding independent claims 52, 54 and 57, the claims are directed
`
`toward an article of manufacture, a system and a method, respectively, for the
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`method of claim 40, and are rejected using the same rational.
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`23.
`
`Regarding dependent claim 58, McNally discloses executing an action
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`by accessing data in a database record corresponding to a desired menu to
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`enable the action to be executed as described above in reference to the
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`rejection of claim 40.
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`

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`Application/Control Number: 09/897,292
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`Page 8
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`Art Unit: 2178
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`Claim Rejections - 35 USC § 103
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`24.
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for
`
`all obviousness rejections set forth in this Office action:
`
`“(a) A patent may not be obtained though the invention is not identical/y
`disclosed or described as set forth in section 102 of this title,
`if the
`differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary
`skill in the art to which said subject matter pertains. Patentability shall not
`be negatived by the manner in which the invention was made. ”
`
`25.
`
`Claim 48 remains rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over McNaIIy in view of Mundell et al. US Patent 6,549,890, filed 8/29/1997,
`
`patented 4/15/2003.
`
`26.
`
`Regarding dependent claim 48, McNaIIy discloses a menu template, a
`
`menu template modifier, and a menu database, where a menu is generated
`
`by the modifier based upon the template and the data in the database; and
`
`enabling. a user to select a desired menu from the menu database, as
`
`described above. McNalIy also discloses the use of a timer function that can
`
`be enabled and disabled by a user as described above. McNally fails to
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`disclose the timer function controlling display of successive menus. Mundell
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`discloses the timer control of successive displays in Figure 7, at reference
`
`sign 72 (shown as “Screen Change Field‘). Mundell also recites: “If a user of
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`computer 14 wanted a display screen 22 to change upon 30 seconds if no
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`other active link event is activated, she would select ”30 seconds" from the
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`pull down menu of screen change form field 79.
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`If a user of computer 14
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`

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`Application/Control Number: 09/897,292
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`Page 9
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`Art Unit: 2178
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`wanted to start timer 52 upon the activation of a certain display screen 22,
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`she would select "start timer" from the pull down menu of timer control form
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`field 81” (column 8, lines 41-48).
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`Therefore, it would have been obvious, to one of ordinary skill in the art at
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`the time the invention was made to use the timer teachings of Mundell with
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`the menu system of McNalIy so that “the data device can be easily
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`programmed and re-programmed to be used for a plurality of different
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`applications” (Mundell, column 2, lines 64—67).
`
`27.
`
`Claims 49, 50, 53, 55 and 56 remain rejected under 35 U‘.S.C. 103(a) as
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`being unpatentable over McNaIIy in view of Banerjee et al. US Patent
`
`6,760,017, filed 10/16/1995, patented 7/6/2004.
`
`28.
`
`Regarding dependent claims 49 and 50, McNalIy discloses a menu
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`template, a menu template modifier, and a menu database, where a menu is
`
`generated by the modifier based upon the template and the data in the
`
`database; and enabling a user to select a desired menu from the menu
`
`database, as described above. McNalIy fails to disclose displaying the menu
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`items in a spatial organization so that each item has a one to one relationship
`
`with the keys on a keyboard (claim 49) or the keys on a numeric keypad
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`(claim 50). Banerjee discloses displaying the menu items
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`in a spatial
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`organization so that each item has a one to one relationship with the keys on
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`a numeric keypad (of a keyboard) in figure ’66 at reference sign 1632 (the
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`menu mapped to the keypad is shown on the right hand side of the figure
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`

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`Application/Control Number: 09/897,292
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`Page 10
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`Art Unit: 2178
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`where the keypad #1 is mapped to the “End' menu item, the keypad #3 is
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`mapped to the “page down” menu item, etc.)
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`Therefore, it would have been obvious, to one of ordinary skill in the art at
`
`the time the invention was made to use the keypad menu item mapping of
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`Banerjee with the menu system of McNally to provide an “interface device
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`that includes a display that can interface with a host computer in a stand-
`
`alone configuration or a host computer connected in either a wired or wireless
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`local area network (LAN)” (column 2, lines 16-19).
`
`29.
`
`Regarding dependent claims 53, 55 and 56, the claims are directed
`
`toward an article of manufacture and a system, respectively, for the method of
`
`claims 49 and 50, and arerejected using the same rational.
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`

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`Application/Control Number: 09/897,292
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`Page 11
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`Art Unit: 2178
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`Response to Arguments
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`30.
`
`Applicant's arguments filed 10/20/2005 have been fully considered but
`
`they are not persuasive.
`
`31.
`
`Regarding the rejected claims, applicant argues that: “applicant’s novel
`
`approach, which is articulated in applicant’s claims, but is not disclosed or
`
`suggested by McNa/ly, is the use of a menu template that enables compact
`
`data storage of a plurality of menus to be achieved” (page 7, last paragraph,
`
`of the amendment filed 10/20/2005). In response to applicant's argument that
`
`the references fail to show certain features of applicant’s invention, it is noted
`
`that the features upon which applicant relies (i.e., “enables compact data
`
`storage of a plurality of menus to be achieved') are not recited in the rejected
`
`claim(s). Although the claims are interpreted in light of the specification,
`
`limitations from the specification are not read into the claims. See In re Van
`
`Geuns, 988 F.2d 1181, 26 USPQZd 1057 (Fed. Cir. 1993).
`
`32.
`
`Also,
`
`regarding the rejected claims,
`
`applicant argues
`
`that:
`
`I“
`In
`
`applicant's claim recitation,
`
`rather than storing a complete menu, an
`
`instruction set (i. e., a menu record or database record uniquely corresponding
`
`to a previously generated menu) is stored, such that a processor (e.g., acting
`
`as a menu template modifier) can use a menu template and the instruction
`set to re-create the menu immediately before it is displayed to a user” (page
`
`7,
`
`last paragraph to page 8,
`
`first paragraph, of
`
`the amendment
`
`filed
`
`10/20/2005).
`
`In response to applicant's argument that the references fail to
`
`

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`Application/Control Number: 09/897,292
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`Page 12
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`Art Unit: 2178
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`show certain features of applicant’s invention,
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`it
`
`is noted that the features
`
`upon which applicant relies (i.e., “an instruction set (i.e., a menu record or
`
`database record uniquely corresponding to a previously generated menu)”
`
`and “a processor (e. g., acting as a menu template modifier)" and “use a menu
`
`template and the instruction set to re-create the menu” and “re-create the
`
`menu immediately before it is displayed to a user”) are not recited in the
`
`rejected claim(s). Although the. claims are interpreted in
`
`light of
`
`the
`
`specification,
`
`limitations from the specification are not read into the claims.
`
`See In re Van Geuns, 988 F.2d 1181, 26 USPQZd 1057 (Fed. Cir. 1993).
`
`33.
`
`Also,
`
`regarding the rejected claims, applicant argues that:
`
`“the
`
`instruction set is significantly smaller than the menu itself” (page 8,
`
`first
`
`paragraph, of the amendment filed 10/20/2005).
`
`In response to applicant's
`
`argument that the references fail
`
`to show certain features of applicant's
`
`invention,
`
`it
`
`is noted that
`
`the features upon which applicant relies (i.e.,
`
`“instruction set is significantly smaller than the menu itself’) are not recited in
`
`the rejected claim(s). Although the claims are interpreted in light of the
`
`specification,
`
`limitations from the specification are not read into the claims.
`
`See In re Van Geuns, 988 F.2d 1181, 26 USPQZd 1057 (Fed. Cir. 1993).
`
`34.
`
`Also, regarding the rejected claims, applicant argues that: “McNa/ly
`
`completely fails to teach or suggest that memory resource savings can be
`
`achieved by saving instruction sets used to re-create a previously generated
`
`menu,
`
`rather than simply saving the menus themselves." (page 8,
`
`first
`
`

`

`Application/Control Number: 09/897,292
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`Page 13
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`Art Unit: 2178
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`paragraph, of the amendment filed 10/20/2005).
`
`In response to applicant's
`
`argument that the references fail
`
`to show certain features of applicant’s
`
`invention,
`
`it
`
`is noted that
`
`the features upon which applicant relies (i.e.,
`
`“memory resource savings can be achieved’ and “saving instruction sets" and
`
`“saving the menus”) are not recited in the rejected claim(s). Although the
`
`claims are interpreted in
`
`light of
`
`the specification,
`
`limitations from the‘
`
`specification are not read into the claims. See In re Van Geuns, 988
`
`F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
`
`35.
`
`Regarding independent claim 40, applicant argues that: “In accord with
`
`applicant's novel approach as defined by Claim 40, additional processing is
`required to display a menu that was previously designed, because the menu
`
`is not stored in a complete form. Instead, a menu record is stored, and the
`
`menu record contains sufficient
`
`information such that a processor (e.g.,
`
`serving as the menu template modifier) can use the data contained in the
`
`menu record with the menu template to recreate or generate the menu
`
`immediately before it is displayed to the user” (page 8, last paragraph, of the
`
`amendment filed 10/20/2005).
`
`In response to applicant's argument that the
`
`references fail to show certain features of applicant’s invention, it is noted that
`
`the features upon which applicant
`
`relies (i.e., “additional processing is
`
`required to display a menu” and “a menu that was previously designed’ and
`
`“the menu is not stored in a complete form” and “a menu record is stored“ and
`
`“the menu record contains sufficient information” and “a processor (e.g.,
`
`serving as the menu temp/ate modifier) can use the data contained in the
`
`

`

`Application/Control Number: 09/897,292
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`Page 14
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`Art Unit: 2178
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`menu record with the menu template to recreate or generate the menu" and
`“recreate or generate the menu immediately before it is displayed to the
`
`user”) are not
`
`recited in the rejected claim. Although the claims are
`
`interpreted in light of the specification,
`
`limitations from the specification are
`
`not
`
`read into the claims. See In re Van Geuns, 988 F.2d1181, 26
`
`USPQZd 1057 (Fed. Cir. 1993).
`
`36.
`
`Also, regarding independent claim 40, applicant argues that: “The
`menu template modifier, the menu template, and a database record are used
`
`to generate the desired menu, which had already been stored in the menu
`
`database as a database record, as opposed to being stored as the actual
`
`menu. McNal/y simply does not teach or suggest an equivalent process.”
`
`(page 9, first paragraph, of the amendment filed 10/20/2005). In response to
`
`applicant's argument that the references fail
`
`to show certain features of
`
`applicant’s invention, it is noted that the features upon which applicant relies
`(i.e., “the desired menu, which had already been stored in the menu database
`
`as a database record’) are not recited in the rejected claim. Although the
`
`claims are interpreted in light of
`
`the specification,
`
`limitations from the
`
`specification are not
`
`read into the claims. See In re Van Geuns, 988
`
`F.2d 1181, 26 USPQZd 1057 (Fed. Cir. 1993).
`
`37.
`
`Also, regarding independent claim 40, applicant argues that: “However,
`
`such a process simply is not equivalent to the steps recited in applicant's
`
`Claim 40, which as noted above, specifically recite that a user is enabled to
`
`

`

`Application/Control Number: 09/897,292
`Art Unit: 2178
`
`,
`
`Page 15
`
`select a desired menu from a menu database (clearly, the desired menu has
`
`already been developed, otherwise it could not have been stored in the menu
`
`database, albeit as a menu record or instruction set, rather than as the menu
`
`itselfl, and then the menu template,
`
`the menu temp/ate modifier, and the
`
`database record (the data actually stored in the menu database in place of
`
`storing the desired menu itself,
`
`to reduce the amount of data that must be
`
`stored) are used to reproduce the desired menu for display to a user” (page 9,
`
`second paragraph, of the amendment
`
`filed 10/20/2005).
`
`In response to
`
`applicant's argument that
`
`the references fail
`
`to show certain features of
`
`applicant’s invention,
`
`it is noted that the features upon which applicant relies
`
`(i.e., “the desired menu has already been developed’ and “a menu record or
`
`instruction sef’ and “the database record (the data actual/y stored in the menu
`
`database in place of storing the desired menu itself’ and “to reduce the
`
`amount of data that must be stored”) are not recited in the rejected claim.
`
`Although the claims are interpreted in light of the specification,
`
`limitations
`
`from the specification are not read into the claims. See In re Van Geuns, 988
`
`F.2d 1181, 26 USPQZd 1057 (Fed. Cir. 1993).
`
`38.
`
`Also, regarding independent claim 40, applicant argues that: “McNal/y
`
`does not teach or suggest that a menu template and a database record
`
`defining an appearance and a functionality of the menu items included within
`
`the desired menu are required to re-create the desired menu for display to a
`
`user” (page 9, second paragraph, of the amendment filed 10/20/2005).
`
`In
`
`response to applicant's argument that the references fail
`
`to show certain
`
`

`

`Application/Control Number: 09/897,292
`
`Art Unit: 2178
`
`'
`
`Page 16
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`features of applicant's invention,
`
`it
`
`is noted that the features upon which
`
`applicant relies (i.e., “a database record defining an appearance and a
`
`functionality of the menu items are required") are not recited in the rejected
`
`claim. Although the claims are interpreted in light of the specification,
`
`limitations from the specification are not read into the claims. See In re Van
`
`Geuns, 988 F.2d 1181, 26 USPQZd 1057 (Fed. Cir. 1993).
`
`39.
`
`Also, regarding independent claim 40, applicant argues that: “McNaI/y's
`
`database record of different menu items and McNa/Iy's menu template are not
`
`used to retrieve a previously generated menu from storage, such that the
`
`previously generated menu can again be generated and displayed to a user”
`
`(page 9, third paragraph, of the amendment filed 10/29/2005). In response to
`
`applicant's argument that
`
`the references fail
`
`to show certain features of
`
`applicant’s invention, it is noted that the features upon which applicant relies
`
`(i.e., “retrieve a previously generated menu from storage") are not recited in
`
`the rejected claim. Although the claims are interpreted in light of
`
`the
`
`specification,
`
`limitations from the specification are not read into the claims.
`
`See In re Van Geuns, 988 F.2d 1181, 26 USPQZd 1057 (Fed. Cir. 1993).
`
`40.
`
`Regarding independent claim 52, applicant argues that: “Note that a
`
`user selects a menu in a database. Logical/y, such a menu has already been
`
`created, and at least a reference to it must exist in a stored form in the
`
`database for a user to be able to select it” (page 10, second paragraph, of the
`
`amendment filed 10/20/2005).
`
`In response to applicant's argument'that the
`
`

`

`Application/Control Number: 09/897,292
`
`Page 17
`
`Art Unit: 2178
`
`references fail to show certain features of applicant's invention, it is noted that
`
`the features upon which applicant relies (Le, “a menu has already been
`
`created' and “at least a reference to it must exist in a stored form in the
`
`database") are not recited in the rejected claim. Although the claims are
`
`interpreted in light of the specification,
`
`limitations from the specification are
`
`not
`
`read into the claims. See In re Van Geuns, 988 F.2d1181, 26
`
`USPQZd 1057 (Fed. Cir. 1993).
`
`41.
`
`Regarding independent claim 52, applicant argues that: “applicant’s
`
`claimed process enables a plurality of menus to be defined and the
`
`information needed to recreate the plurality of menus stored in a format
`
`requiring fewer memory resources. Thus,
`
`these functions are patentably
`
`distinguishable from those disclosed by McNa/ly'
`
`(page
`
`10,
`
`second
`
`paragraph, of the amendment filed 10/20/2005).
`
`In response to applicant's
`
`argument
`
`that
`
`the references fail
`
`to show certain features of applicant’s
`
`invention,
`
`it
`
`is noted that the features upon which applicant relies (Le, “a
`
`plurality of menus to be defined” and “information needed to recreate the
`
`plurality of menus stored in a format requiring fewer memory resources") are
`
`not recited in the rejected claim. Although the claims are interpreted in light of
`
`the specification,
`
`limitations from the specification are not read into the
`
`claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQZd 1057 (Fed. Cir.
`
`1993)
`
`

`

`Application/Control Number: 09/897,292
`
`Page 18
`
`Art Unit: 2178
`
`42.
`
`Regarding independent claim 52, applicant argues that: “It should be
`
`noted that while in a particularly preferred embodiment, there is a one-to-one
`
`correspondence between a database record and a particular menu, so that
`
`each menu is associated with a unique database record,
`
`it should also be
`
`recognized that a plurality of different database records can be used to store
`
`a unique menu in a compressed format” (page 10, second paragraph, of the
`
`amendment filed 10/20/2005).
`
`In response to applicant's argument that the
`
`references fail to show certain features of applicant's invention, it is noted that
`
`the features upon which applicant relies (i.e., “one-to-one correspondence
`
`between a database record and a particular menu” and “each menu is
`
`associated with a unique database record’ and “database records can be
`
`used to store a unique menu in a compressed format”) are not recited in the
`
`rejected claim. Although the claims are interpreted in light of the specification,
`
`limitations from the specification are not read into the claims. See In re Van
`
`Geuns, 988 F.2d 1181, 26 USPQZd 1057 (Fed. Cir. 1993).
`
`

`

`Application/Control Number: 09/897,292
`
`Page 19
`
`Art Unit: 2178
`
`Conclusion
`
`43.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of
`
`time policy as set forth in 37 CFR 1.136(a).
`
`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 mailing date of this final action.
`
`44.
`
`_ Any inquiry concerning this communication or earlier communications from
`
`the examiner should be directed to Gregory J. Vaughn whose telephone
`
`number is (571) 272—4131. The examiner can normally be reached Monday to
`
`Friday from 8:00 am to 5:00 pm.
`
`If attempts to reach the examiner by telephone are unsuccessful,
`
`the
`
`examiner’s supervisor, Stephen S. Hong can be reached at (571) 272-4124.
`
`The fax phone number for
`
`the organization where this application or
`
`proceeding is assigned is (571) 272—2100.
`
`

`

`Application/Control Number: 09/897,292
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`Page 20
`
`Art Unit: 2178
`
`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).
`
`January 3, 2006
`
`Gregory J. Vaughn
`
`