PATENT OWNER
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`PATENT OWNER
`EXHIBIT 2039
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`EXHIBIT 2039
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`APPLICANTS: (cid:9)
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`McNally et al. (cid:9)
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`GROUP ART UNIT:2173 (parent case)
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`SERIAL NO.: (cid:9)
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`Continuation of 09/400,413 EXAMINER: Cao Nguyen (parent case)
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`FILED: (cid:9)
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`FOR: (cid:9)
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`HEREWITH
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`INFORMATION MANAGEMENT AND SYNCHRONOUS
`COMMUNICATIONS SYSTEM WITH MENU GENERATION
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`COMMISSIONER FOR PATENTS
`Washington, D.C. 20231
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`PRELIMINARY AMENDMENT
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`Responsive to the Final Rejection in the Parent Case dated May 22, 2001,
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`Applicants respectfully request reconsideration in view of the amendment and following
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`remarks. No fees are believed due. However, in the event that any fees are necessitated by this
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`response, the Commissioner is hereby authorized to charge our Deposit Account 13-4500, Order
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`No. 3125-4002US1.
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`IN THE CLAIMS
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`Please add new claim 93 as follows.
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`93. (cid:9)
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`(new) The information management and synchronous
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`communication system of claim 45 wherein a non-simultaneous protocol is used to acknowledge
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`receipt of the data at the valet parking base station.
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`REMARKS
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`I. (cid:9)
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`Status of the Claims
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`Claims 1-92 are pending in this application, with claim 93 being added by
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`this Amendment.
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`Claims identical to claims 1-19, 20-28, and 35-39 were rejected in the
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`parent case under 35 U.S.C. 102(e) as being anticipated by Cupps et al. In the parent case these
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`claims were identified by numbers 1-19, 31-39, and 50-54 respectively. This Amendment will
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`refer to the claims by their new numbers.
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`Claims identical to claims 29-34 and 40-41 were rejected in the parent
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`case under 35 U.S.C. 103(a) as being unpatentable over Cupps in view of Behr. In the parent
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`case these claims were identified by numbers 44-49 and 56-57 respectively. This Amendment
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`will refer to the claims by their new numbers.
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`Of the pending claims for which identical claims were rejected in the
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`parent application, claims 1, 12, 20, 29, 32, and 33 are independent.
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`II. (cid:9)
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`Rejections Under 35 U.S.C. 102(e)
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`In the parent application the Examiner rejected claims identical to
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`independent claims 1, 12, and 20 under 35 U.S.C. 102(e) as being anticipated by Cupps et al.
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`With regard to claims identical to independent claims 1, 12, and 20 of the
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`present application, the Examiner argues that at lines 35-65 of column 9 and in figs. 2 and 3a-3f,
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`Cupps discloses information synchronization involving a second or modified menu. However
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`Applicants respectfully disagree.
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`The first section cited by the examiner, column 9 lines 35-65, fails to
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`disclose information synchronization involving a second or modified menu, nor any other sort of
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`information synchronization. This section instead discloses a customer providing to an online
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`ordering machine registration information, location information, time of day information, and an
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`indication of the type of service sought (e.g., takeout or delivery).
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`The second section cited by the examiner, Fig. 2, is a system overview
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`showing an online ordering machine component, a client machine component connected to the
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`online ordering machine via a network, and telephone and fax components connected to the
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`online ordering machine via standard telephone lines. Also shown are various elements of the
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`online ordering machine and the client machine. However, nowhere in the figure or its
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`corresponding disclosure is there any indication of synchronization involving a second or
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`modified menu. More generally, there is no disclosure of information synchronization occurring
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`between any components of the system, nor is there disclosure of any other sort of information
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`synchronization.
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`The third section cited by the examiner, Figs. 3a-3f, fails to disclose
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`synchronization involving a second or modified menu and instead discloses the "schema" — that
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`is the organization and structure — of the order database 128 (see Cupps, Col. 5 Ln. 21). Nowhere
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`in the figures or in the corresponding disclosure is there even any indication that the order
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`database is involved in any sort of information synchronization. In fact, there is no disclosure of
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`any sort of information synchronization in this section.
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`Furthermore, the remainder of the Cupps disclosure also fails to disclose
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`synchronization involving a second or modified menu, nor any other sort of information
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`synchronization.
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`claim 1 wherein:
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`Accordingly, Cupps fails to disclose at least the aspect of independent
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`"... data comprising the second menu is synchronized
`between the data storage device connected to the
`central processing unit and at least one other
`computing device ..."
`(emphasis added)
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`Similarly, Cupps also fails to disclose at least the aspect of independent
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`claim 12 wherein:
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`" ... data comprising the modified menu is synchronized
`between the data storage device and at least one other
`computing device..."
`(emphasis added)
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`Furthermore, Cupps fails to disclose at least the aspect of independent
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`claim 26 wherein:
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`" ... synchronizing the data comprising the second menu
`between the storage device and at least one other data
`storage medium, wherein the other data storage medium is
`connected to or is part of a different computing device..."
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`1' '
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`(emphasis added)
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`The disclosure of the present invention explains that according to the
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`claimed synchronization there is, for example:
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`" ... fast synchronization between a central database and
`multiple handheld devices, synchronization and
`communication between a Web server and multiple handheld
`devices, a well-defined API that enables third parties such as
`POS companies, affinity program companies and internet
`content providers to fully integrate with computerized
`hospitality applications, real-time communication over the
`internet with direct connections or regular modem dialup
`connections and support for batch processing that can be
`done periodically throughout the day to keep multiple sites in
`synch with the central database."
`(see disclosure, p. 7 ln. 21 — p. 8 ln. 4; emphasis added)
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`As another example, the disclosure of the present invention notes that
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`according to such synchronization:
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`,4 ... a reservation made online can be automatically
`communicated to the backoffice server and then
`synchronized with all the wireless handheld devices
`wirelessly. Similarly, changes made on any of the wireless
`handheld devices are reflected instantaneously on the
`backoffice server Web pages and the other handheld
`devices."
`(see disclosure, p. 8 ln. 13-16; emphasis added)
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`In light of the above, Applicants submit that independent claims 1, 12, and
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`20 are in condition for allowance. As claims 2-11, 13-19, 21-28, 35-39, 49-68, and 84-92 depend
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`therefrom, these claims, for at least the above-identified reasons, are also thought to be
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`allowable.
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`III. (cid:9)
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`Rejections Under 35 U.S.C. 103(a)
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`In the parent application the Examiner rejected claims identical to
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`independent claims 29, 32, and 33 under 35 U.S.C. 102(e) as being unpatentable over Cupps in
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`view of Behr.
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`As explained above, Cupps fails to disclose any sort of information
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`synchronization. Furthermore, Applicants find no disclosure in Behr of any sort of information
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`synchronization, nor does the Examiner provide any reference to such disclosure in Behr .
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`Applicants therefore submit that Cups and Behr, alone or in combination,
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`fail to disclose, teach, or suggest at least the aspect of independent claim 29 wherein:
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`"... applications or data are synchronized wirelessly
`between the central database and at least one wireless
`handheld computing device and wherein the
`applications program interface and communications
`control module establish a seamless link between the
`data in the central database and the data on the
`wireless handheld computing device.."
`(emphasis added)
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`Similarly, Cups and Behr, alone or in combination, fail to disclose, teach,
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`or suggest at least the aspect of independent claim 32 wherein:
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`" ... hospitality applications or data are synchronized
`between the central database. at least one wireless computing
`device and at least one wireless paging or beeper device and
`wherein messaging to the wireless paging or beeper device is
`enabled directly from the operator interface of the wireless
`computing device."
`(emphasis added)
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`Furthermore, Cups and Behr, alone or in combination, fail to disclose,
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`teach, or suggest at least the aspect of independent claim 33 wherein:
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`" ... applications or data are synchronized between the
`central database and the second storage medium and wherein
`the applications program interface and communications
`control module establish a seamless link between the data in
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`the central database and the data on the second storage
`medium."
`(emphasis added)
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`The Examiner also states:
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`"Behr teaches wireless handheld computing device on which
`hospitality application (see col. 14, lines 1-57)."
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`Applicants respectfully disagree. Behr discloses "a method of providing
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`route guidance information and other information from a base unit to a mobile unit in response to
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`a request from the mobile unit" (see Behr, Col. 4 Ln. 28-31). Behr explains that the mobile unit
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`sends the request for route guidance as a "query message 120" including a "destination field
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`144" and a "destination type field 146", and, for example , that the "destination type field 146
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`may be 'restaurant', and the destination field 144 may be 'McDonald's' (see Behr, Col. 14 Ln.
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`37-44). Behr also discloses that other specifiable destinations include "airport[s]" and
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`"museum[s]" (see Behr, Col. 14 Ln. 42).
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`However, Applicants submit that simply stating that a mobile unit may
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`request from a navigation system directions to a restaurant does not constitute disclosure of a
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`hospitality software application. As known in the art, a hospitality software application is, for
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`example, a piece of software used to provide operational solutions in hospitality industries such
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`as restaurants and hotels concerning, for example, food ordering, menus, wait-lists and
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`reservations. Accordingly, Applicants submit that Behr fails to teach a "wireless handheld
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`computing device on which hospitality application" as suggested by the Examiner.
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`In light of at least the above, Applicants submit that independent claims
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`29, 32, and 33 are in condition for allowance. As claims 30, 31, 34, 40-48, and 93 depend
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`therefrom, these claims, for at least the above-identified reasons, are also thought to be
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`allowable.
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`IV. (cid:9)
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`Conclusion and Authorization
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`Applicants believe that all pending claims are allowable over the cited art.
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`The Commissioner is hereby authorized to charge any additional fees
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`which may be required for this amendment, or credit any overpayment to Deposit Account No.
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`13-4500, Order No. 3125-4002. A DUPLICATE OF THIS DOCUMENT IS ATTACHED.
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`In the event that an extension of time is required in addition to that
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`requested in a petition for an extension of time, the Commissioner is requested to grant a petition
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`for that extension of time which is required to make this response timely and is hereby
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`authorized to charge any fee for such an extension of time or credit any overpayment for an
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`extension of time to Deposit Account No. 13-4500, Order No. 3125-4002US1. A DUPLICATE
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`OF THIS DOCUMENT IS ATTACHED.
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`Respectfully submitted,
`MORGAN & FINNEGAN, L.L.P.
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`November 1, 2001
`MORGAN & FINNEGAN, L.L.P.
`345 Park Avenue
`New York, NY 10154
`(212)758-4800 / (212)751-6849 (facsimile)
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`W. • s orne
`g. No. 36,231
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