`
`PATENT OWNER
`EXHIBIT 2024
`
`EXHIBIT 2024
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED S (cid:9)
`United S (cid:9)
`Address: C (cid:9)
`P.O. Box
`Alexandn (cid:9)
`www.usp
`
`EPARTIVIENT OF COMMERCE
`and Trademark Office
`R FOR PATENTS
`
`_ inia 22313-1450
`
`APPLICATION NO. (cid:9)
`
`I (cid:9)
`
`FILING DATE
`
`1
`
`09/897,292
`
`06/29/2001
`
`FIRST NAMED INVENTOR (cid:9)
`
`I ATTORNEY DOCKET NO. I CONFIRMATION NO.
`
`Gerald I. Cohen
`
`COHE0002
`
`1998
`
`01/11/2006
`25268 (cid:9)
`7590 (cid:9)
`LAW OFFICES OF RONALD M ANDERSON
`600 108TH AVE, NE
`SUITE 507
`BELLEVUE, WA 98004
`
`EXAMINER
`
`VAUGHN, GREGORY J
`
`ART UNIT (cid:9)
`
`I (cid:9)
`
`PAPER NUMBER
`
`2178
`
`DATE MAILED: 01/11/2006
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`
`
`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`09/897,292
`
`Examiner
`
`COHEN, GERALD I.
`
`Art Unit
`
`2178
`Gregory J. Vaughn
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`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(a). 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
`
`1)Z Responsive to communication(s) filed on 20 October 2005.
`2b)EI This action is non-final.
`2a)Z This action is FINAL. (cid:9)
`3)q Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)Z Claim(s) 40-58 is/are pending in the application.
`is/are withdrawn from consideration.
`4a) Of the above claim(s) (cid:9)
`is/are allowed.
`5)0 Claim(s) (cid:9)
`6)Z Claim(s) 40-58 is/are rejected.
` is/are objected to.
`7)0 Claim(s) (cid:9)
`are subject to restriction and/or election requirement.
`8)0 Claim(s) (cid:9)
`
`Application Papers
`
`9)0 The specification is objected to by the Examiner.
` is/are: a)q accepted or b)EI objected to by the Examiner.
`10)0 The drawing(s) filed on (cid:9)
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`11)0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`b)E1Some * c)E None of:
`1.0 Certified copies of the priority documents have been received.
`
`2.0 Certified copies of the priority documents have been received in Application No. (cid:9)
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) q Notice of References Cited (PTO-892)
`2) q Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) q Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)
`Paper No(s)/Mail Date
`
`4) q Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`5) q Notice of Informal Patent Application (PTO-152)
`6) q Other:
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 7-05)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 2
`
`DETAILED ACTION
`
`Action Background
`
`1 (cid:9)
`
`This action is responsive to the applicant's amendment, filed on
`
`10/20/2005.
`
`2.
`
`Applicant has cancelled claims 1-39; amended claims 41, 47, 48, 52 and
`
`54; and added new claims 57 and 58.
`
`3.
`
`Claims 40-58 are pending in the case, claims 40, 52, 54 and 57 are
`
`independent claims.
`
`Claim Rejections - 35 USC § 112
`
`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 nearly 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
`
`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
`
`the time the application was filed, had possession of the claimed invention.
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 3
`
`6.
`
`Regarding claim 57, the amendment filed 10/20/2005 adds the following
`
`limitations: "each menu being configured to be displayed to a user in it's
`
`entirety at the same time" (preamble), "each database record comprising
`
`sufficient data to enable said menu template modifier to generate a unique
`
`menu based on said menu template and the data in each database record'
`
`(first limitation), "enabling a user to select a unique database record' (second
`
`limitation), "the unique database record corresponding to the previously
`
`generated menu" (third limitation). The examiner has reviewed the originally
`
`filed specification, and has failed to find support for the added limitations.
`
`Applicant is required to cancel the new matter in response to this office
`
`action.
`
`7.
`
`Regarding claim 58, the amendment filed 10/20/2005 adds the following
`
`limitations: "machine instructions, when executed by a processor, further
`
`cause the actuation of a specific key to execute an action". The examiner has
`
`reviewed the originally filed specification, and has failed to find support for the
`
`added limitations. Applicant is required to cancel the new matter in response
`
`to this office action.
`
`8. (cid:9)
`
`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."
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 4
`
`9.
`
`Claim 57 is rejected under 35 U.S.C. 112, second paragraph, as being
`
`indefinite for failing to particularly point out and distinctly claim the subject
`
`matter which applicant regards as the invention.
`
`10. The term "sufficient data" in claim 57 is a relative term, which renders the
`
`claim indefinite. The term "sufficient data" is not defined by the claim, the
`
`specification does not provide a standard for ascertaining the requisite
`
`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
`
`record" limitation indefinite.
`
`Claim Rejections - 35 USC § 102
`
`11. The following is a quotation of the appropriate paragr-aphs of 35
`
`U.S.C. 102 that form the basis for the rejections under this section made in
`
`this Office action:
`
`"A person shall be entitled to a patent unless —
`
`(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."
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 5
`
`12. Claims 40-47, 51, 52 and 54 remain rejected under 35 U.S.C. 102(e) as
`
`being anticipated by McNally et al. US Patent 6,384,850, filed 9/21/1999,
`
`patented 5/7/2002 (hereinafter McNally).
`
`13. Regarding independent claim 40, McNally 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.
`
`McNally further discloses enabling a user to select a desired menu from the
`
`menu database. McNally recites: "The inventive approach also includes
`
`templates for common modifiers that can be assigned to similar menu items.
`
`The preferred embodiment also supports multiple databases, thus providing
`
`for the creation and storing of different menu database on handheld devices
`
`such as breakfast, lunch or dinner menus. The user can then select the
`
`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
`
`items are shown in Figure 7 as "Dessert", Drinks", "Main", "PreV' etc.), where
`
`a menu item has an event associated with it (shown as "Main") and causing
`
`the selected event to occur (in Figure 7, selecting the "Main" menu item would
`
`cause the display to change to the main menu).
`
`14. Regarding dependent claim 41, McNally discloses the event as
`
`displaying an additional menu (as described above).
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 6
`
`15. Regarding dependent claim 42, McNally discloses a sequencer
`
`component that determines in which a plurality of events should occur in
`
`Figure 7 (shown as the tabs at the top of the figure labeled "Login", "Checks",
`
`"Order", "View" and "Pay'). McNally further discloses the use of a timing
`
`function in Figure 4 at reference sign 12 (shown as "Prep. Time").
`
`16. Regarding dependent claim 43, McNally discloses disabling sequencer
`
`and timer events so that a user can navigate through a sequence of menus
`
`more rapidly in Figure 7 (shown as the "Browse" button at the bottom of the
`
`figure). The browse screen is shown in Figure 1 of McNally.
`
`17. Regarding dependent claim 44, McNally discloses a plurality of
`
`database records that define a plurality of sequential menus in Figure 1 at
`
`reference signs 2, 3 and 4 (shown as a "Menu Tree"). The Menu Tree shown
`
`in Figure 1 of McNally enables the use to select a sequence of menus (shown
`
`as "Menu" on the menu tree), a sequence of menu items (shown as "Entrees"
`
`on the menu tree), by selecting a menu item (for instance "NY Strip").
`
`18. Regarding dependent claim 45, McNally discloses a tracker component
`
`that records each menu item selected in Figure 7 (shown as "Select Guest to
`
`Order for").
`
`19. Regarding dependent claim 46, McNally discloses the generation of a
`
`report related to the items selected on a previous menu in Figure 4 (the report
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 7
`
`shown in the figure would be generated upon a user selecting the "Chicken
`
`Alaska" menu item in a previous menu).
`
`20. Regarding dependent claim 47, McNally discloses generating a report
`
`that includes each previously selected menu item in Figure 7 (shown as the
`
`tab labeled "View" at the top of the figure). The report could be used to
`
`provide results of a questionnaire comprising the menu items displayed to the
`
`user from which the user selected specific menu items.
`
`21. Regarding dependent claim 51, McNally discloses an editing function
`
`with the menu template modifier that allows a user to edit a menu item in
`
`Figure 2 at reference sign 2 (shown as editable text boxes in the figure).
`
`22. Regarding independent claims 52, 54 and 57, the claims are directed
`
`toward an article of manufacture, a system and a method, respectively, for the
`
`method of claim 40, and are rejected using the same rational.
`
`23. Regarding dependent claim 58, McNally discloses executing an action
`
`by accessing data in a database record corresponding to a desired menu to
`
`enable the action to be executed as described above in reference to the
`
`rejection of claim 40.
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 8
`
`Claim Rejections - 35 USC § 103
`
`24. 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 identically
`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 McNally in view of Mundell et al. US Patent 6,549,890, filed 8/29/1997,
`
`patented 4/15/2003.
`
`26. Regarding dependent claim 48, McNally 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. McNally also discloses the use of a timer function that can
`
`be enabled and disabled by a user as described above. McNally fails to
`
`disclose the timer function controlling display of successive menus. Mundell
`
`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
`
`computer 14 wanted a display screen 22 to change upon 30 seconds if no
`
`other active link event is activated, she would select "30 seconds" from the
`
`pull down menu of screen change form field 79. If a user of computer 14
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 9
`
`wanted to start timer 52 upon the activation of a certain display screen 22,
`
`she would select "start timer" from the pull down menu of timer control form
`
`field 81" (column 8, lines 41-48).
`
`Therefore, it would have been obvious, to one of ordinary skill in the art at
`
`the time the invention was made to use the timer teachings of Mundell with
`
`the menu system of McNally so that "the data device can be easily
`
`programmed and re-programmed to be used for a plurality of different
`
`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
`
`being unpatentable over McNally 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, McNally 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. McNally fails to disclose displaying the menu
`
`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
`
`(claim 50). Banerjee discloses displaying the menu items in a spatial
`
`organization so that each item has a one to one relationship with the keys on
`
`a numeric keypad (of a keyboard) in figure 66 at reference sign 1632 (the
`
`menu mapped to the keypad is shown on the right hand side of the figure
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 10
`
`where the keypad #1 is mapped to the "End' menu item, the keypad #3 is
`
`mapped to the "page down" menu item, etc.)
`
`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
`
`Banerjee with the menu system of McNally to provide an "interface device
`
`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
`
`local area network (LAN)" (column 2, lines 16-19).
`
`29. (cid:9)
`
`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 are rejected using the same rational.
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 11
`
`Response to Arguments
`
`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 McNally, 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 USPQ2d 1057 (Fed. Cir. 1993).
`
`32. Also, regarding the rejected claims, applicant argues that: "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
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 12
`
`show certain features of applicant's invention, 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 use?') 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).
`
`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 USPQ2d 1057 (Fed. Cir. 1993).
`
`34. Also, regarding the rejected claims, applicant argues that: "McNally
`
`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 (cid:9)
`Art Unit: 2178
`
`Page 13
`
`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. (cid:9)
`
`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 template modifier) can use the data contained in the
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 14
`
`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.2d 1181, 26
`
`USPQ2d 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. McNally 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 USPQ2d 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 (cid:9)
`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
`
`itself), and then the menu template, the menu template 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 set" and "the database record (the data actually 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 USPQ2d 1057 (Fed. Cir. 1993).
`
`38. (cid:9)
`
`Also, regarding independent claim 40, applicant argues that: "McNally
`
`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 (cid:9)
`Art Unit: 2178
`
`Page 16
`
`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 USPQ2d 1057 (Fed. Cir. 1993).
`
`39. Also, regarding independent claim 40, applicant argues that: "McNally's
`
`database record of different menu items and McNally'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 10/20/2005). 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., "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 USPQ2d 1057 (Fed. Cir. 1993).
`
`40. Regarding independent claim 52, applicant argues that: "Note that a
`
`user selects a menu in a database. Logically, 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 if' (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 (cid:9)
`Art Unit: 2178
`
`Page 17
`
`references fail to show certain features of applicant's invention, it is noted that
`
`the features upon which applicant relies (i.e., "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.2d 1181, 26
`
`USPQ2d 1057 (Fed. Cir. 1993).
`
`41. (cid:9)
`
`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 McNally' (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., "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 USPQ2d 1057 (Fed. Cir.
`
`1993).
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 18
`
`42. (cid:9)
`
`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 USPQ2d 1057 (Fed. Cir. 1993).
`
`
`
`Application/Control Number: 09/897,292 (cid:9)
`Art Unit: 2178
`
`Page 19
`
`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 (cid:9)
`Art Unit: 2178
`
`Page 20
`
`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 86