UNITED STATE~ EPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, D.C. 20231
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`IYJCNAL .. L .. Y
`
`Tl'r102/0.S:~~2
`
`.JOHN 1.>!. O>::BOF:NE:
`MORGAN & FINNEGAN, LLP
`::c<d .. S P~\1"':1< r~VENI...IE
`NEW YORK NY 10164
`
`EXAMINER
`
`Affiiii!IIMEI\I" {
`
`PAPER NUMBER
`
`I q
`
`DATE:f.it)t.ji:ifu:
`
`OS/22/0t
`
`Please find below and/or attached an Office communication concerning this application or
`proceeding.
`
`Commissioner of Patents and Trademarks
`
`PT0-90C {Aev,11/00)
`
`1·FIIoCop~~
`
`Apple Inc. Exhibit 1017
`
`

`
`Office Action Summary
`
`Application No.
`091400,413
`
`Appllo ... t(s)
`
`Examiner
`Cao "Kevin" Nguyen
`
`Art Unit
`2173
`
`•• 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) 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 the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will
`be considered timely.
`- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mo;:~iling 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.q.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) IX] Responsive to communication(s) filed on --.JMytgar'--'-1 '-'280~0'-'1'--------------------------
`2b)(~ This action is non-final.
`
`2a)l)(] This action is FINAL.
`
`3) [] 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 Qu;ljM!35 C. D. 11; 453 O.G. 213.
`
`Disposition of Claims
`4) IX] Claim(s) 1-19 31-39 44-54 56 and 57
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`is/are pending in the applica
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`4a) Of the above, claim(s) - - - - - - - - - - - - - ' - - - - - - - - - - - is /a re withdrawn from conside"
`5) IX] Claim(s) 20-30 and$')- 'f 3 ~ !;_s;'
`6) IX] Claim(s) 1-19 31-39 44-54 56 and 57
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`is/are rejected.
`
`is/are allowed.
`
`7) [] Claim(s) - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - is /a re objected to.
`8) n Claims
`are subject to restriction and/or election reauirElml
`
`Application Papers
`9) CJ The specification is objected to by the Examiner.
`1 O) ,-, The drawing(s) filed on - - - - - - - - - is/are objected to by the Examiner.
`11) i> The proposed drawing correction filed on
`
`is: a[l approved b)Odisapproved.
`
`12) [] The oath or declaration is objected to by the Examiner.
`
`Priority under 35 U.S.C. § 119
`13)0 Acknowledgement is made of a claim for foreign priority under 35 U.S. C.§ 119(a)-(d).
`
`[]None of
`a)[] All b) [] Some• c)
`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 . - - - - - - - - - -
`3. [] Copies of the cert'1fied copies of the priority documeTntsRha
`ve
`be
`e( n))received in this National Stage
`17
`2
`application from the International Bureau (PC
`u e
`. a .
`1
`•see the attached detailed Office action for a list of the certified copies not received.
`14) [] Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
`
`Attachment(s)
`15) !X] Notice of References Cited (PT0-892)
`16) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`17) 0 Information Disclosure Statement(s) (PT0-1449) Paper No(s). __ _
`
`18) 0 Interview Summary (PT0-413) Paper No(s). __ _
`19) 0 Notice of Informal Patent Application (PT0-152)
`20) [] Other:
`
`u.S. Patent and Trademark Qtfice
`PT0-326 (Rev. 9-00)
`
`Office Action Summary
`
`Part of Paper No. 9
`
`Apple Inc. Exhibit 1017
`
`

`
`Application/Control Number: 09/400,413
`
`Page 2
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`Art Unit: 2173
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`DETAILED ACTION
`
`Claim Rejections- 35 USC§ 102
`
`1.
`
`The following is a quotation of the appropriate paragraphs of35 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 a patent granted on an application for patent by another filed in the United
`Statesb~fore the invention thereof by the applicant for patent, or on an international application by another who
`has fulfilled the requirements of paragraphs(!), (2),and{4}of section 371 ©of this title before the invention
`thereof by the applicant for patent.
`
`2.
`
`Claims 1-19,31-39 and 50-54 ::'rej~t~d under 35 U.S.C. 102(e) as being anticipated by
`
`)
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`Cupps eta!. (5,991,739).
`
`Regarding claim l, Cupps discloses an information management and synchronous
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`\
`
`communicatiorts system for generating menus comprising: a central processing unit, a data
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`storage device connected to said central processing unit, an operating system including a graphical
`
`user interface (see figure 2), a first menu stored on said data storage device, application software
`
`for generating a second menu from said first menu, wherein the application software facilitates the
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`generation of the second menu by allowing selection of items from the first menu, addition of
`
`items to the second menu and assignment of parameters to items in the second menu using the
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`graphical user interface of said operating system (see col. 9, lines 42-67).
`
`Regarding claim 2, Cupps discloses an information management and synchronous
`
`communications system, wherein the second menu is a restaurant menu (see col. 5, lines 27-67).
`
`Apple Inc. Exhibit 1017
`
`

`
`Application/Control Number: 09/400,413
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`Page 3
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`Art Unit: 2173
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`Regarding claim 3, Cupps discloses an information management and synchronous
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`communications system, wherein the second menu is capable,,of being displayed on the display
`
`screen of a wireless comp11ting device (see col. 4, lines 1-55).
`
`Regarding cl~ims 4 and 5, Cupps discloses an information management and synchronous
`
`communications system, wherein selectionsTrom the second menu are capable of being
`
`transmitted to a receiving computer by wireless !ink.(see figures 1-2).
`
`Regarding claims 6 and 7, Cupps discloses an information management and synchronous
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`communications system in, wherein the compllter network is the internet; and selections from the
`
`second menu are capable of being transmitted to a,receiving computer via the internet (see col. 9,
`
`lines 16-65and figure 8-10).
`Regarding claims 8-11, Cupps disCloses :an information management and synchronous
`
`communications system, wherein the second menu is created in conformity with hypertext markup
`
`language or extensible markup language (see col. 10, lines 8-56 and. figures 7-10).
`
`As claims 12-19, 31-39 and 5:0"54 are analyzed as previously discussed with respect to
`
`claims 1-11 above.
`
`Apple Inc. Exhibit 1017
`
`

`
`Application/Control Number: 09/400,413
`
`Page4
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`Art Unit: 2173
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`Claim Rejections- 35 USC§ 103
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`3.
`
`The following is a quotation ofJ5 U.S.C 103(a) which forms the basis for all obviousness
`
`rejections set forth in this Officeaction:
`
`(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 subjec!lnatter sougbt 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 wa.s made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`marmer ·in which the invention was made.
`
`This application currently names jointjnventors. In considering patentability of the claims
`
`under 35 US.C. 103(a), the examiner presumes that the subject matter of the various claims was
`
`commonly owned at the time any inventions covered therein were made absent any evidence to
`
`the contrary. Applicant is advised.ofthe obligatioffunder 37 CFR 1.56 to point out the inventor
`
`and invention dates of each claim that was not commonly owned at the time a later invention was
`
`made in order for the examiner to consider the applicability of35 U.S.C. 103©.and potential 35
`
`U.S. C. !02(f) or (g) prior art under 35U.S.C. l03(a).
`
`4.
`
`Claims 44-49 and 56-57 are rejected under ~5 US. C. 103(a) as being unpatentable over
`
`Cupps in view ofBehr et al. (US Patent No. 6,1 07,944).
`
`Regarding claim 44, Cupps fails to explicitly teach at least one wireless handheld
`
`computing device on which hospitality application.
`
`Behr teaches wireless handheld computing device on which hospitality application (see
`
`col. 14, lines 1-57). It would have been obvious to one of an ordinary skill in the art at the time
`
`the invention was made to provide wireless handheld computing device on which hospitality
`
`Apple Inc. Exhibit 1017
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`

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`Application/Control Number: 09/400,413
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`Page 5
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`Art Unit: 2173
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`application as taught by Behr to the internet on-line ordering vendor of Cupps; in order to provide
`
`the customer with the hospitality .ovetthe wireless communication device. It would enhance user
`
`friendly and to remotely access into the hospitality ordering database:.
`
`Regarding .claim 45, Behr discloses wherein the communications control module and the
`
`application program interface enable automatic .generation of and updating of operator menus or
`
`screen of the handheld (see figures 33-35).
`
`Regarding claim 46; Cupps discloses wherein Messaging format are used which are
`
`conformity with HTML or XML messagefbrmat (see col. 9, lines 8~65).
`
`As claims 48-49 and 56-57 are analyzed):t.§:previously discussed with respect to claims 44-
`
`46 above.
`
`Response to Arguments
`
`5.
`
`Applicant's arguments filed .on 03/01/01 have been fully considered but they are not
`
`persuastve.
`
`On page 7, Applicant argues that Cupps fails to explicitly teach or suggest "the second
`
`menu is synchronized between the data storage device connected to CPU ". However, the
`
`limitations set forth to reply upon "A customer accesses the online ordering machine through a
`
`client computer that is connected to the Internet. The customer enters the appropriate web
`
`address or universal resource locator (URL) for the online ordering machine. The online order
`
`procedure interacts with the client computer by providing access to a series of web pages that can
`
`Apple Inc. Exhibit 1017
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`

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`Application/Control Number: 09/400,413
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`Page6
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`Art Unit: 2173
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`be downloaded to the client computer for the customer's use. Initially, a home web page is
`
`provided to the client computer. The customer can register with the online ordering machine
`
`which is accomplished by filling o\Jt information requested through:one or more web pages. The
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`customer is then provided with a web page that prompts the customer for'his location as shown in
`
`the exemplary,web page. This web page' Can. also obtain the current time at the customer's
`
`location which is returned to the online order procedure. The current time is used to determine
`
`which restaurants meeting the customer's criteria are currently open. In addition, the web page
`
`obtains the type of service that the customer seeks, such as but not limited to take-out service
`
`or delivery service." See Cupps col. 9, lines35-65Atnd figures 2-JF.
`
`On page 7, Applicant argues that the.daims. invention describe a real-time synchronization
`
`of data on different computers or database. However, the limitation as claimed was not clearly
`
`defined in the claim invention.
`
`Allowable Subject Matter
`
`6.
`
`Claims 20-30, 40-43 and 55 are allowed over the prior art of record.
`
`Applicant has claimed uniquely distinct features in the instant invention which are not
`
`found in the prior art either singularly or in combination. They are an information management
`
`and synchronous communications system for generating and transmitting menus a sub-modifier
`
`menu stored on data storage device and displayable in a window of graphical user interface, and
`
`Apple Inc. Exhibit 1017
`
`

`
`Application/Control Number: 09/400,413
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`Page 7
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`Art Unit: 2173
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`application software for generating a second menu from first menu and transmitting second menu
`
`to a wireless handheld computingdevice or Web page. These features are not found or suggested
`
`in the prior art.
`
`The present invention is directedto.an information management an,l,synchronous
`
`communications system for generating and transmitting menus. Each independent claims 20 and
`
`40 are identified the uniquely distinct features"a sub-modifier menu stored on data storage
`
`device and displavable in a windowo{graphicaluser interface. and avplication software for
`
`generating a second menu fromi first merttFatzd transmitting second menu to a wireless handheld
`
`computing device or Web vage".. The cl()$e$tprior~rt. Ct~pps (US Patent No. 5,991 ,739) and
`
`Chen (US Patent No. 5, 724,069} discloses convention of user interactive interfac.e providing an
`
`on-line ordering distribution, either singularly orin combination, fail to anticipate or render the
`
`above underlined limitations obvious.
`
`Conclusion
`
`7.
`
`The prior art made of record and not relied upon is considered pertinent to applicant's
`
`disclosure and provided on the attached Form 892.
`
`Apple Inc. Exhibit 1017
`
`

`
`Application/Control Number: 09/400,413
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`Page 8
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`Art Unit: 2173
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`8.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension oftime
`
`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 ofthh(action. In the event a first replyis filed within TWO
`
`MONTHS of the mailing date ofthis final action and'theadvisory 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 exte11sion fee pursuant to 3 7
`
`CFR 1. !36(a) will be calculate& from the maili!1g 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.
`
`Response
`
`9.
`
`Responses to this action should be mailed to: CommissionerofPatents and Trademarks,
`
`Washington, D.C. 20231. If applicant desires to fax a response, (703) 308-6306 may be used for
`
`formal communications.
`
`Please label "PROPOSED" or "DRAFT" for informal facsimile communications. For after
`
`final responses, please label "AFTER FINAL" or "EXPEDITED PROCEDURE" on the
`
`document.
`
`Apple Inc. Exhibit 1017
`
`

`
`Application/Control Number: 09/400,413
`
`Page 9
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`Art Unit: 2173
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`Hand-delivered responses should be brought to Crystal Park II, 2121 Crystal Drive,
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`Arlington, VA. Sixth Floor (Receptionist).
`
`Inqu.ires
`
`I 0.
`
`Any' inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to Cao (Kevin)Nguyenwhosetelephone number is (703) 305-3972. The
`
`examiner can normally be reached on Monday-Friday from 8:30am to 6:00pm.
`
`If attempts to reach the examiner by. teh:phone are.unsuccessful, the examiner's
`
`supervisor, John W. Cabeca, can be. reached onf703) 308~3116. The fax number forthis group is
`
`(703) 308-636Q,
`
`Any inquiry of a general nature or relating to the status of this application or proceeding
`
`should be directed to the Group receptionist whose telephone number is (703) 305-3900.
`
`PATENT EXAMINER
`Art Unit 2773
`
`Cao "Kevin" Nguyen
`May 16, 2001
`
`Apple Inc. Exhibit 1017
`
`

`
`·---
`
`Notice of Rererences Cited
`
`AppllcanuPatent
`McNally et al.
`
`-
`
`f Application/Control No.
`09/400,413
`
`Examiner
`Gao "Kevin" Nguyen
`
`Art Unit
`2173
`
`Page 1 of 1
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`U.S. PATENT DOCUMENTS
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`Document Number
`CO<.>ntry Code-Number-Kind Code
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`Date 1
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`Include, as applicable: Author, Title, Date, Publisher, Edition or Volume, Pertinent Pages
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`NON-PATENT DOCUMENTS
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`·A copy ot this refere11ce 1s 110! bei11g lumished with this Office actio11. See MPEP § 707.05(a)
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`1 Dates 111 MM-vYYY lormat are publicatiol1 dates
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`2 Ctassfficatio11s may be U.S. or 1oreig11
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`U.S. Pate11l a11d Trademark. QNice
`PT0-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 9
`
`Apple Inc. Exhibit 1017