App|icant(s)IPatent Under Reexamination
`
`Index Of Claims
`
`
`
`
`App|icationIContro| No.
`
`11112990
`
`MCNALLY ET AL.
`
`
`
`
` Examiner
`
`Art Unit
`
`2191
`MATTHEW J BROPHY
`
`
`Rejected I Cancelled
`E Allowed E Restricted
`
`Non-Elected
`Interference
`
`Objected
`
`El Claims renumbered in the same order as presented by applicant
`
`El CPA
`
`El T.D.
`
`El R.1.47
`
`CLAIM
`
`DATE
`
`Final
`
`Original
`103
`104
`
`03/07/2008 08/15/2008
`~/
`~/
`
`\\
`\\
`222222“
`\
`\
`222222“
`\
`\
`222222“
`\
`\
`222222“
`\
`\
`222222“
`110
`111
`112
`
`<\\\
`
`<\\\
`
`\
`\
`222222“
`\
`\
`222222“
`\
`\
`222222“
`\
`\
`222222“
`\
`\
`222222“
`118
`119
`120
`
`<\\\\
`
`<\\\\
`
`222222“
`\
`\
`222222“
`\
`\
`222222“
`\
`\
`222222“
`\
`\
`222222“
`126
`\\
`127
`
`\ \
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. : 20080815
`
`Petitioners‘ Exhibit 1012, Page 255
`
` 265
`
`Petitioners' Exhibit 1012, Page
`
`

`
`App|icationIContro| No.
`
`App|icant(s)IPatent Under
`Reexamination
`
`Seafch NOteS
`
`11112990
`
`MCNALLY ET AL.
`
`
`
`Examiner
`
`MATTHEW J BROPHY
`
`
`
`Art Unit
`
`2191
`
`
`Class Examiner Subclass Date
`
`715
`810-845
`8/15/2008
`MJB
`
`
`
`SEARCHED
`
`SEARCH NOTES
`
`Search Notes
`
`Examiner
`
`INTERFERENCE SEARCH
`
`See EAST search History
`inventor search in EDAN
`
`8/15/2008
`8/15/2008
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. : 20080815
`
`Petitioners‘ Exhibit 1012, Page 255
`
` 266
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Page 1 of 1
`
`FORM PT0_1449A
`
`Attorney Docket:
`3125.-4003US1
`Applicant:
`Keith McNally et al.
`INFORMATION DISCLOSURE CITATION Filing Date:
`April 22, 2005
`
`‘ Serial No.:
`11/112,990
`
`Group An Unit
`2191
`
`U. S. PATENT / PUBLICATION DOCUMENTS
`
`Examiner
`
`Initial
`
`Patent/Publication Number
`
`Publication/Issue Date
`
`Name
`
`Filing Date
`
`5,974,238
`
`October 26, 1999
`
`Chase, Jr.
`
`August 7, 1996
`
`Examiner
`Initial
`
`Patent Number
`
`Publication
`Date
`
`Country
`
`Copy
`Filed
`
`Translation
`
`FOREIGN PATENT DOCUMENTS
`
`El Yes
`
`El Yes El No El Abstract I:IN/A
`
`El Yes
`
`El Yes El No El Abstract I:IN/A
`
`D Yes
`
`D Yes D No D Abstract I:IN/A
`
`D Yes
`
`D Yes D No D Abstract I:IN/A
`
`D Yes
`
`D Yes D No D Abstract I:IN/A
`
`D Yes
`
`D Yes D No D Abstract I:IN/A
`
`Initial if reference considered, Whether or not citation is in conformance with MPEP §609.
`Draw line through citation if not in conformance and not considered.
`Include copy of this form with next communication to Applicant.
`
`Date Considered
`
`Examiner
`
`EXAMINER:
`
`1160803 V1
`
`Petitioners‘ Exhibit 1012, Pageixsqa
`
` 267
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Docket No. 3125—4003US1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Serial No.:
`
`1 1/1 12,990
`
`Confirmation No.2
`
`7098
`
`App1icant(s): McNally, et al.
`
`Group Art Unit:
`
`2191
`
`Filed:
`
`April 22, 2005
`
`Examiner:
`
`Brophy, Matthew
`
`Customer No.:
`
`27123
`
`For:
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS COMMUNICATIONS
`SYSTEM WITH MENU GENERATION, AND HANDWRITING AND VOICE
`MODIFICATION OF ORDERS
`
`REQ QUEST FOR RECONSIDERATION
`
`Mail Stop Amendment
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`In response to the pending non—Final Office Action dated August 22, 2008,
`
`reconsideration and allowance of the pending claims of the above-identified application is
`
`respectfully requested.
`
`Remarks begin on page 2 of this paper.
`
`1160808 v1
`
`Petitioners‘ Exhibit 1012, Page 258
`
` 268
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Serial No. 11/ 1 12,990
`
`Docket No. 3 125-4003 USl
`
`REMARKS
`
`Claims 1-102 were previously cancelled without prejudice or disclaimer by
`
`preliminary amendments filed in this application on April 22, 2005 and September 25, 2007.
`
`Claims 103-127 are now pending in the application.
`
`Claims 103-122 were rejected on the grounds of nonstatutory obviousness-type
`
`double patenting as being unpatentable over claims 1, 1 and 12 respectively of U.S. Patent No.
`
`6,384,850 in View of U.S. Patent No. 5,937,041 (“Cardillo”). [8/22/08 Office Action at p.2].
`
`Applicants do not acquiesce to the characterization of Cardillo made in the Office Action and
`
`respectfully assert that Cardillo’s teaching is not pertinent to the subject matter of the pending
`
`claims. However, in the interest of furthering prosecution, Applicants submit herewith a
`
`Terminal Disclaimer signed by the Assignee’s authorized representative, noting that US. Patent
`
`No. 6,384,850 is commonly owned by the Assignee of the present application,
`
`Applicants believe that the nonstatutory obviousness-type double patenting
`
`rejection has been overcome by the submission of the Terminal Disclaimer.
`
`CONCLUSION
`
`Based on the foregoing remarks, the Applicants respectfully request
`
`reconsideration and withdrawal of the pending rejections and allowance of this application. The
`
`Applicants respectfully submit that claims 103-127 are now patentable and in condition for
`
`allowance. An action passing this case to issue is therefore respectfully requested.
`
`1160808 v1
`
`Petitioners‘ Exhibit 1012, Page 259
`
` 269
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Serial No. 11/112,990
`
`Docket No. 3125-4003US1
`
`If any issues remain, or if the Examiner has any suggestions for expediting
`
`issuance of this application, the Examiner is respectfully requested to contact the undersigned at
`
`the telephone number listed below. Favorable and prompt consideration is requested.
`
`AUTHORIZATION
`
`Applicants believe that this preliminary amendment is timely filed prior to
`
`examination on the merits and that no additional fee is required. However, to the extent that any
`
`extension of time is necessary or any additional fees are required, Applicants hereby authorize
`
`the Commissioner to charge any additional fees, or credit any overpayment, to Deposit Account
`
`No. 13-4500 (Order No. 3125—4003US 1).
`
`INN
` Dated: August 29, 2008
`
`Respectfully s mitted
`MORGAN
`
`By:
`
`Angus R. Gill
`Registration No. 51,133
`
`CORRESPONDENCE ADDRESS:
`MORGAN & FINNEGAN L.L.P.
`
`3 World Financial Center
`
`New York, New York 10281
`
`(212) 415-8700 (Telephone)
`(212) 415-8701 (Facsimile)
`
`1160808 vl
`
`Petitioners‘ Exhibit 1012, Page 270
`
` 270
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Docket No. 3 125-4003USl
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant(s): McNally, et a].
`
`Serial No.:
`
`11/112,990
`
`Filed:
`
`April 22, 2005
`
`Group Art Unit:
`
`2191
`
`Examiner:
`
`Brophy, Matthew
`
`For:
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS
`COMMUNICATIONS SYSTEM WITH MENU GENERATION, AND
`
`HANDWRITING AND VOICE MODIFICATION OF ORDERS
`
`TERMINAL DISCLAIMER UNDER 37 C.F.R. §1.321(C)
`TO OBVIATE DOUBLE PATENTING REJECTION
`
`Mail Stop Amendment
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`Identity of Assignee
`
`The petitioner, Ameranth Wireless, 1110., having a business address at 5 820
`
`Oberlin Drive, Suite 202, San Diego, CA 92121, is the owner by assignment of the entire, right,
`
`title and interest in the above—identified application, Serial No. 11/ 1 12,990. The petitioner is also
`
`the owner of the entire, right, title and interest in U.S. Patent No. 6,384,850.
`
`Identification of Persong s) Making This Disclaimer
`
`Name of disclaimant: Angus R. Gill. Disclaimant represents that he is a
`
`Registered Patent Agent, Registration No. 51,133, and authorized to sign on behalf of the
`
`assignee identified above.
`
`Extent of Interest
`
`The extent of assignee’s interest is in the whole of this invention.
`
`1161384-vl
`
`Petitioners‘ Exhibit 1012, Page 271
`
` 271
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Docket No. 3125—4003US1
`
`Serial No. 11/112,990
`
`Declaration Under 37 C.F.R. 3.73gb)
`
`1, the undersigned, have reviewed all the documents in the chain of title of the
`
`patent application identified above and, to the best of my knowledge and belief, title is in the
`
`assignee identified above.
`
`Disclaimer
`
`The petitioner, through its Agent of Record, hereby disclaims, except as provided
`
`below, the terminal part of the statutory term of any patent granted on the instant application,
`
`which would extend beyond the expiration date of the full statutory term defined in 35 U.S.C.
`
`154 to 156 and 173, of United States Patent No. 6,384,850. Petitioner hereby agrees that any
`
`patent so granted on the instant application shall be enforceable only for and during such period
`
`that it and United States Patent 6,384,850 are commonly owned. This agreement runs with any
`
`patent granted on the instant application and is binding ‘upon the grantee, its successors or
`
`assigns.
`
`In making the above disclaimer, petitioner does not disclaim the terminal part of
`
`any patent granted on the instant application that would extend to the expiration date of the full
`
`statutory term as defined in 35 U.S.C. 154 to 156 and 173 of U.S. Patent 6,384,850, in the event
`
`that U.S. Patent 6,384,850 expires for failure to pay a maintenance fee, is held unenforceable, is
`
`found invalid by a court of competent jurisdiction, is statutorily disclaimed in whole or
`
`terminally disclaimed under 37 C.F.R. 1.321, has all claims cancelled by a reexamination
`
`certificate, is reissued, or is in any manner terminated prior to the expiration of its full statutory
`
`term as shortened by any terminal disclaimer filed prior to its grant.
`
`1161384 vl
`
`Petitioners‘ Exhibit 1012, Page 272
`
` 272
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Docket No. 3125—4003US1
`
`Serial No. 11/112,990
`
`Fee Status
`
`(37 C.F.R. 1.20(d) and 37 C.F.R. 1.321)
`
`E large entity——fee $110.00
`
`[:|
`
`small entity-—fee $55.00
`
`Fee Payment
`
`I:I
`
`IE
`
`Attached is a check in the sum of 35
`
`Charge Deposit Account 13-4500, Order No. 3125—4003US1 any fee required by this
`paper.
`
`AUTHORIZATIONS:
`
`The Commissioner is hereby authorized to charge any additional fees which may
`
`be required for timely consideration of this Terminal Disclaimer under 37 C.F.R. §§1.16 —§1.20
`
`or credit any overpayment to Deposit Account No. 13—4500,0rder No. 3125—4003US1.
`
`A DUPLICATE COPY OF THIS DISCLAIMER IS ATTACHED.
`
`Respectfully su
`MORGAN
`
`'tted,
`NE
`
`, L.
`
`
`
`Angu R. Gill
`Registration No. 51,133
`
`Dated: August 29, 2008
`
`By:
`
`Correspondence Address:
`
`MORGAN & FINNEGAN, L.L.P.
`345 Park Avenue
`
`New York, NY 10154-0053
`
`(212) 758-4800 Telephone
`(212) 751-6849 Facsimile
`
`1161384 v1
`
`Petitioners‘ Exhibit 1012, Page 273
`
` 273
`
`Petitioners' Exhibit 1012, Page
`
`

`
`FORM PTO-1449B
`
`Attorney Docket:
`3125-4003US1
`
`Serial No.:
`11/112,990
`
`INFORMATION DISCLOSURE
`CITATION
`
`Applicant:
`Keith McNally et al.
`Filing Date:
`April 22, 2005
`NON PATENT LITERATURE DOCUMENTS
`
`Group Art Unit:
`2191
`
`Examiner
`Initia1s*
`
`Cite N()_1
`
`Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of the item (book, magazine,
`journal, serial, symposium, catalog, etc.), date, page(s), volume-issue number(s), publisher, city and/or country where
`published.
`
`Page 1 of 4
`
`SQUIRREL SYSTEMS, company information web page,
`http1//web.archive.org/web/199905 08153 73 1/www.squirrelsystems.com/about/company.htm
`1, May 8, 1999
`
`SQUIRREL SYSTEMS, products web page,
`http1//web.archive.org/web/1 99905 08175 824/www. squirrelsystems . com/products/newsq.htm
`1, May 8 ,1999
`
`1.
`
`2.
`
`ROBIN BERGER, "POS Positions Spago For Growth,"
`http://web.archive.org/web/19991009105 324/www. squirrelsystems . com/media/articles/spag
`o.html,
`
`http1//web.archive.org/web/19991 1 12165 75 6/www. squirrelsystems . com/media/articles .html,
`3. Hospitality Technology, April/May 1997
`
`SQUIRREL COMPANIES INC., Squirrel Restaurant Management System Brochure, Pre-
`September 21, 1999??
`
`5.
`
`7.
`
`8.
`
`SQUIRREL SYSTEMS, "SQUiRREL® Companies Inc. wins the California Restaurant
`Association’s 1998 EXPO Innovator Award in the Technology category",
`http2//web.archive.org/web/19991013045 5 15/squirrelsystems.com/media/pr/aug2098 .html,
`6. August 20, 1998
`BUSINESS WIRE, Fujitsu and Sulcus Hospitality Group partner to develop first wireless
`computer for restaurant industry, Business Wire, August 30, 1993
`BUSINESS WIRE, "Sulcus's Squirrel and cybermeals Ink Technology Alliance, cybermeals
`New Menucaster Software to be Bundled into Squirrel's Touch Tomorrow Point of Sale
`Package,"
`http 1//findarticles.com/p/articles/mi_m0EIN/is_1 998_Feb_24/ai_203 163 3 9?tag=content,col1
`, Business Wire, February 24, 1998
`BUSINESS WIRE, "Accel Partners Invest $10 Million in cybermeals",
`http ://www.allbusiness.com/banking-finance/financial-markets-investing/6840069- 1 .html,
`9. Business Wire, May 28, 1998
`REVSHARE.com, cybermeal revenue sharing program,
`http://web.archive.org/web/19980124080645/http://www.revshare.com/, January 24, 1998
`
`10.
`
`SQUIRREL SYSTEMS, SQ Classic product webpage,
`http2//web.archive.org/web/19991010022213/www.squirrelsystems.com/products/sq_classic.
`html, October 10, 1999
`
`11.
`
`Examiner
`
`Signature
`
`Date
`
`Considered
`
`*EXAM|NER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not considered.
`Include copy of this form with next communication to applicant. 1 Applicant's unique citation designation number (optional). 2 Applicant is to place a check mark here if English
`language Translation is attached. This collection of information is required by 37 CFR 1.97 and 1.98. The information is required to obtain or retain a benefit by the public
`which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 2 hours to
`complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on
`the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark
`Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO:
`Commissioner for Patents, P.0. Box 1450, Alexandria, VA 22313-1450.
`
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`1158775 v1
`
`Petitioners‘ Exhibit 1012, Page 274
`
` 274
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Page 2 of 4
`
`FORM PTO-1449B
`
`Attorney Docket:
`3125-4003US1
`
`Serial No.:
`11/112,990
`
`INFORMATION DISCLOSURE
`CITATION
`
`Applicant:
`Keith McNally et al.
`Filing Date:
`April 22, 2005
`NON PATENT LITERATURE DOCUMENTS
`
`Group Art Unit:
`2191
`
`Examiner
`Initia1S*
`
`Cite No_1
`
`Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of the item (book, magazine,
`journal, serial, symposium, catalog, etc.), date, page(s), volume-issue number(s), publisher, city and/or country where
`published.
`
`SQUIRREL SYSTEMS, "Brew Moon Management Toasts SQUiRREL's ‘Seamless
`Solution"',
`
`http://web.archive.org/web/199905 08170309/www.squirrelsystems.com/media/articles/brew
`12. moon.html, November 1998
`
`13.
`
`SQUIRREL SYSTEMS, "Squirrel Customer Profile: CHEVY'S FRESH MEX",
`http://www.squirrelsystems.con1/news/articles/9808.html, August 1998
`\/IICROS SYSTEMS, INC., "8700 HMS Version 2.10 User’s Manual",
`
`http://web.archive.org/web/19961 1 1 103415 6/www.micros .con1/frames/s ervdine.htm,
`14. Copyright 1997
`\/IICROS SYSTEMS, INC., core products web page,
`http://web.archive.org/web/19961 1 1 1034156/www.micros.con1/frames/servdine.htm,
`\Iovember 11, 1996
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`21.
`
`\/IICROS SYSTEMS, INC., new products web page,
`http ://web .archive.org/web/ 19961 1 1 1034 10/www.micros.com/frames/innovats .htm,
`\Iovember 11, 1996
`
`\/IICROS SYSTEMS, INC., quick service products web page,
`http://web.archive.org/web/19961 1 1 1034149/www.micros.con1/frames/quikserv.htm,
`\Iovember 11, 1996
`
`VIICROS SYSTEMS, INC., company information web page,
`http://web.archive.org/web/19961 1 1 1034029/www.micros .con1/frames/about.htm,
`\Iovember 11, 1996
`VIICROS SYSTEMS, INC., 8700 HMS Product Overview,
`
`http://web.archive.org/web/199905 08 144340/www.micros .con1/mktg/htm1/8700over.htm,
`\/lay 8, 1999
`VIICROS HOSPITALITY INFORMATION SYSTEMS, "Preliminary Information Packet
`for the: Micros Hand-Held Touchscreen," Pre-September 21, 1999??
`
`MICROS SYSTEMS, INC., "The MICROS 2700 HTS Touchscreen", Pre September 21,
`1999??
`
`INTEGRATED RESTAURANT SOFTWARE, RMS Touch - Touch Screen Restaurant
`
`Management System product description,
`http://web.archive.org/web/19970215025 823/www.rmstouch.com/pos.htm, February 15,
`
`Examiner
`
`Signature
`
`Date
`
`Considered
`
`*EXAM|NER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not considered.
`Include copy of this form with next communication to applicant. 1 Applicant's unique citation designation number (optional). 2 Applicant is to place a check mark here if English
`language Translation is attached. This collection of information is required by 37 CFR 1.97 and 1.98. The information is required to obtain or retain a benefit by the public
`which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 2 hours to
`complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on
`the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark
`Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO:
`Commissioner for Patents, P.0. Box 1450, Alexandria, VA 22313-1450.
`
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`1158775 v1
`
`Petitioners‘ Exhibit 1012, Page 275
`
` 275
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Page 3 of 4
`
`FORM PTO-1449B
`
`Attorney Docket:
`3125-4003US1
`
`Serial No.:
`11/112,990
`
`INFORMATION DISCLOSURE
`CITATION
`
`Applicant:
`Keith McNally et al.
`Filing Date:
`April 22, 2005
`NON PATENT LITERATURE DOCUMENTS
`
`Group Art Unit:
`2191
`
`Examiner
`Initia1S*
`
`Cite No"
`
`Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of the item (book, magazine,
`journal, serial, symposium, catalog, etc.), date, page(s), xgolulpifl-issue number(s), publisher, city and/or country where
`pu 1S e .
`
`INTEGRATED RESTAURANT SOFTWARE, company profile web page,
`http://web.archiVe.org/web/19970215 025 85 8/www.rmstouch. com/profilehtm, February 15 ,
`1997
`
`COMPUWAVE TECHNOLOGIES, INC., Elite32 Palm System brochure, Pre-September
`21, 1999??
`
`COMPUWAVE TECHNOLOGIES, INC., POSInfrared Restaurant System brochure, Pre-
`September 21, 1999??
`COMPUWAVE TECHNOLOGIES, INC., Wireless POS DRIVE-THRU SYSTEM
`brochure, Pre-September 21, 1999??
`COMPUWAVE TECHNOLOGIES, INC., "CompuwaVe Technologies Approved as
`Supplier to McDonald's Canada", Compuwave Press Release, Sept. 14, 2000
`
`23.
`
`24.
`
`25.
`
`26.
`
`27.
`
`28.
`
`COMPUWAVE TECHNOLOGIES, INC., Revolutionary WIRELESS Restaurant System
`brochure, Pre-September 21, 1999??
`MENUSOFT SYSTEMS CORPORATION, "Winning with Windows Digital Dining: Austin
`97", Austin, Texas Digital Dining Users’ Conference, Feb. 20, 1997
`MENUSOFT SYSTEMS CORPORATION, "Digital Dining for Windows User Manual",
`30. Copyright 1997
`
`29.
`
`MENUSOFT SYSTEMS CORPORATION, "Digital Dining for Windows V7.0 User
`31. Manual", Copyright 1997
`MENUSOFT SYSTEMS CORPORATION, "Digital Dining for Windows V7.0 setup
`32. manual", Copyright 1997
`
`34.
`
`IBERTECH, INC., "Ibertech, cybermeals Announce Technology Partnership",
`http://findarticles.com/p/articles/mi_m0EIN/is_1998_Feb_2/ai_20205 914/print?tag=artBody
`;col1, Business Wire. February 2, 1998
`ED RUBENSTEIN, "Future Food for Thought",
`http://findarticles.com/p/articles/mi_m3190/is_/ai_20462276, Nation's Restaurant News,
`35. March 30, 1998
`
`AMERANTH TECHNOLOGY SYSTEMS, INC., company home page,
`http://web.archiVe.org/web/19981202001436/http://www.ameranth.con1/, December, 02,
`1998
`
`Examiner
`
`Signature
`
`Date
`
`Considered
`
`*EXAM|NER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not considered.
`Include copy of this form with next communication to applicant. 1 Applicant's unique citation designation number (optional). 2 Applicant is to place a check mark here if English
`language Translation is attached. This collection of information is required by 37 CFR 1.97 and 1.98. The information is required to obtain or retain a benefit by the public
`which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 2 hours to
`complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on
`the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark
`Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO:
`Commissioner for Patents, P.0. Box 1450, Alexandria, VA 22313-1450.
`
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`1158775 V1
`
`Petitioners‘ Exhibit 1012, Page 275
`
` 276
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Page 4 of 4
`
`FORM PTO-1449B
`
`Attorney Docket:
`3125-4003USl
`
`Serial No.:
`ll/112,990
`
`INFORMATION DISCLOSURE
`CITATION
`
`Applicant:
`Keith McNally et al.
`Filing Date:
`April 22, 2005
`NON PATENT LITERATURE DOCUMENTS
`
`Group Art Unit:
`2191
`
`Examiner
`Initia1S*
`
`Cite No_1
`
`Include name of the author (in CAPITAL LETTERS), title of the article (When appropriate), title of the item (book, magazine,
`journal, serial, symposium, catalog, etc.), date, page(s), Volume-issue number(s), publisher, city and/or country Where
`published.
`
`COMPUWAVE TECHNOLOGIES, INC., company information web page,
`http://web.archiVe.org/web/200102071743 16/wwwcompuwave.net/about.htm. February 7,
`200 1
`
`COLLINS & MALIK, "HOSPITALITY INFORMATION TECHNOLOGY", pp. 214-376,
`Kendall/Hunt Pub. Co., 3d Ed., 1998
`
`"Wireless Technologies and the National Information Infrastructure", OTA-ITC-622 GPO
`
`
`
`Examiner
`
`Signature
`
`Date
`Considered
`
`*EXAM|NER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not considered.
`Include copy of this form with next communication to applicant. 1 Applicant's unique citation designation number (optional). 2 Applicant is to place a check mark here if English
`language Translation is attached. This collection of information is required by 37 CFR 1.97 and 1.98. The information is required to obtain or retain a benefit by the public
`which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 2 hours to
`complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on
`the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark
`Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO:
`Commissioner for Patents, P.0. Box 1450, Alexandria, VA 22313-1450.
`
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`1158775 V1
`
`Petitioners‘ Exhibit 1012, Page 277
`
` 277
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Electronic Patent Application Fee Transmittal
`
`Tltle of lnventlon:
`
`Information management and synchronous communications system with
`menu generation, and handwriting and voice modification of orders
`
`First Named Inventor/Applicant Name:
`
`Keith R. McNa||y
`
`Attorney Docket Number:
`
`3125—4003US1
`
`Utility under 35 USC111(a) Filing Fees
`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`
`USD($)
`
`
`
`Petitioners‘ Exhibit 1012, Page 278
`
` 278
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`
`USD($)
`
`Miscellaneous:
`
`310
`
`Submission- Information Disclosure Stmt
`
`Statutory disclaimer
`
`1806
`
`1814
`
`1
`
`130
`
`130
`
`Total in USD ($)
`
`Petitioners‘ Exhibit 1012, Page 279
`
` 279
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Electronic Acknowledgement Receipt
`
`Application Number:
`
`International Application Number:
`
`3863604
`
`11112990
`
`Confirmation Number:
`
`7098
`
`Title of Invention:
`
`Information management and synchronous communications system with
`menu generation, and handwriting and voice modification of orders
`
`First Named Inventor/Applicant Name:
`
`Customer Number:
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`Receipt Date:
`
`Filing Date:
`
`Time Stamp:
`
`Application Type:
`
`Payment information:
`
`Submitted with Payment
`
`Payment Type
`
`Payment was successfully received in RAM
`
`RAM confirmation Number
`
`
`
`Deposit Account
`
`Authorized User
`
`File Listing:
`
`Document
`Number
`
`_
`_
`Document Description
`
`FiI_e SizelBvte_s_l/
`Petitioners‘ Exhibit 1012 Page.
`_
`_
`’
`I -
`
` 280
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Information:
`
`Information:
`
`Information:
`
`Information:
`
`Information:
`
`Information:
`
`Information:
`
`Information Disclosure Statement Letter
`
`31254003US1Supp|ementa||nf
`ormationDisc|osureStatement.
`
`180553
`
`c0efa
`b8c9d942ld959IIe45f4333ebd7aba3b97l
`
`31254003US1RequestForConsi
`deration.pdf
`
`881 e52b5e67538df35725cfcb1 860f0401 :1
`47a2
`
`Multipart Description/PDF files in .zip description
`
`Amendment - After Non-Final Rejection
`
`Applicant Arguments/Remarks Made in an Amendment
`
`Terminal Disclaimer Filed
`
`31254003US1Termina|Disc|aim
`
`enpdf
`
`Information Disclosure Statement Letter
`
`31 254003US1 Form PTO1 449A.
`pdf
`
`3db936f56164ba47771afdcb27f609f2e84c
`6707
`
`Information Disclosure Statement Letter
`
`31254003US1FormPTO1449B.
`pdf
`
`313064
`
`12914b493e0982ba3f815c0c81ba2d1a643
`7a674
`
`NPL Documents
`
`NPL Documents
`
`NPL Documents
`
`138749
`
`32d89471001828a30604f05cc3491d77458
`45a53
`
`102393
`
`35f80e8bd9965c0a7del b2lf5978f84a6e2a
`8a4f
`
`223634
`
`a8a2da174f9d06d23eaa8450c7cf7970549a
`
`no
`
`Petitioners‘ Exhibit 1012, Page
`
` 281
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Information:
`
`NPL Documents
`
`NPL Documents
`
`NPL Documents
`
`NPL Documents
`
`NPL Documents
`
`NPL Documents
`
`NPL Documents
`
`NPL Documents
`
`NPL Documents
`
`18141027
`
`6618ea1cfde410552004d7e2116e218f824
`
`100690
`
`d92ead02c36e5338167914e77ce6be585e3
`b3eea
`
`444906
`
`ffa4b432348f7b57428353c25b5 1 e91 dac44
`3ca2
`
`313512
`
`0d2730ad752990d8bbad0bf7b0c44f9cac6
`3ba11
`
`3329385
`
`5574dCb4082da421b8faCf89d25d48d6766
`70fa5
`
` 282
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Information:
`
`Information:
`
`Information:
`
`Information:
`
`NPL Documents
`
`NPL Documents
`
`NPL Documents
`
`142561
`
`86557299f1bfff81f38b24e061fd1fe16bad4
`907
`
`24830011
`
`d8fb5567337228f437435a2bb1f6f11:31:67
`3ea6
`
`1151600
`
`f94f6be33e482c6dfc0a9a4ca1515748f81ce
`754
`
`Fee Worksheet (PTO-06)
`
`fee-info.pdf
`
`6e76d2e8e4f9cea4965231666725105074
`61 d9b
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO ofthe indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`lfa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`lfa timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO as a Receiving Office
`lfa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCT/R0/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`Petitioners‘ Exhibit 1012, Page 283
`
` 283
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Docket No. 3125-4003 US 1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Serial No.:
`
`11/112,990
`
`Confirmation No.:
`
`7098
`
`App1icant(s): McNally et al.
`
`Filed:
`
`April 22, 2005
`
`Group Art Unit:
`Examiner:
`
`2191
`Brophy, Matthew J.
`
`Customer No.:
`
`27123
`
`For:
`
`INFORMATION MANAGEMENT AND SYNCHRONOUS COMMUNICATIONS
`
`SYSTEM WITH MENU GENERATION, AND HANDWRITING AND VOICE
`MODIFICATION OF ORDERS
`
`SUPPLEMENTAL INFORNIATION DISCLOSURE STATEMENT
`
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`This Information Disclosure Statement is filed in accordance with 37 C.F.R.
`
`§§1.56, 1.97 and 1.98. The items listed on Form PTO—l449, a copy of which is enclosed, are
`
`made of record to assist the Patent and Trademark Office in its examination of this application.
`
`The Examiner is respectfully requested to fully consider the items and to independently ascertain
`
`their teaching.
`
`The submitted references were provided to the assignee of the present application
`
`very recently in a litigation (Ameranth, Inc. v. Menusoft Systems Corp. et al., 2:07-cv-0027l-
`
`TJW—CE, E.D. Tex.) involving patents claiming common priority with the present application.
`
`The references were put forth in invalidity contentions as required by E.D. Tex. Local Patent
`
`Rule 3—3 (se_e www.txed.uscourts.gov/Rules/LocalRules/Documents/Appendix%2OM.pdf). The
`invalidity contentions comprise nearly 3000 pages. Applicants submit herewith the alleged prior
`
`art references referred to in the invalidity contentions document which were provided to
`
`Applicants. Due to the volume, Applicants do not presently submit the non—prior art invalidity
`
`contentions document. However, if the Examiner wishes to review the aforesaid invalidity
`
`contentions document, Applicants request that he inform the Applicants’ undersigned agent.
`
`Applicants will promptly provide the aforesaid invalidity contentions document pursuant to any
`
`such request.
`
`1158657 vl
`
`Petitioners‘ Exhibit 1012, Page 284
`
` 284
`
`Petitioners' Exhibit 1012, Page
`
`

`
`Docket No. 3125—4003US 1
`Serial No. 11/112 990
`
`Also, please note that items 5, 20-21, 24-26 and 28 (Non Patent Literature
`
`Documents on Form 1449B) have been alleged by defendants in the above—referenced action to
`
`be prior art. However, those documents are undated. Accordingly, for purposes of examination,
`
`Applicants respectfully request that those references be treated as prior art based upon the
`
`allegations, but Applicants reserve the right to challenge that status if information becomes
`
`available indicating that defendants’ allegations are not correct.
`
`1..|:|
`
`2. El
`
`3.
`
`III
`
`For each of the following items listed on the enclosed copy of Form PTO-1449 that is
`not in the English language, an English language translation of that item or a portion
`thereof or a concise explanation of the relevance of that item is enclosed:
`
`For each of the following items listed on the enclosed copy of Form PTO-1449 that is
`not in the English language, a concise explanation of the relevance of that item is
`incorporated in the specification of the above-identified application.
`
`Any copy of the items listed on the enclosed copy of Form PTO-1449 that is not
`enclosed with this Information Disclosure Statement was previously cited by or
`submitted to the Patent and Trademark Office in application Serial No.
`, filed
`
`4. E]
`
`No fee is due under 37 C.F.R. §l.l7(p) for this Information Disclosure Statement
`since it is being filed in compliance with:
`
`D 37 C.F.R. §1.97(b)(l), within three months of the filing date of a national
`application other than a CPA; or
`
` El
`
`Cl
`
`Cl
`
`37 C.F.R. §1.97(b)(2), within three months of the date of entry into the
`national stage as set forth in §1.491 in an international application; or
`
`37 CPR. §1.97(b)(3), before the mailing date of a first Office action on the
`merits; or
`
`37 C.F.R. §1.97(b)(4) before the mailing date of a first office action after the
`filing of an RCE under §1.1l4.
`
`5.
`
`[:1
`
`No fee is due under 37 C.F.R. §l.l7(p) for this Information Disclosure Statement
`since it is being filed in compliance with 37 CPR. §1.97(c), after the period specified
`in paragraph 4 above but before t