DETAILED ACTION
This Action is responsive to Applicant’s Amendments filed March 18, 2026.
Please note, claims 1-20 remain pending.
Response to Arguments
On pages 8-9, Applicant argues that Woycik does not teach “generating a plurality of items based on information received from unrestricted computer terminals, the plurality of items comprising at least one database entry.” In particular, Applicant argues that the kiosks of Woycik merely provides menus with “available items” and are not generated based on any information that is provided by the user.
As to the above, Examiner respectfully submits paragraph 0095 of Woycik teaches that administration tools are available from any client kiosk, which Examiner interprets as “unrestricted computer terminals.” Examiner further respectfully submits paragraph 0113 teaches adding a new item and editing various item attributes to the new item. Examiner submits paragraph 0124 teaches administrator access to the database. Examiner further respectfully submits paragraph 0112 of Woycik teaches when adding an item, the administrative tool launches a separate items detail screen to edit various item attributes, including text, details, recipe and user defined fields. Thus Examiner respectfully submits that Woycik teaches “generating a plurality of items based on information received from unrestricted computer terminals, the plurality of items comprising at least one database entry.”
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of US Patent No. 8,484,240.
"A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus)." ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
"Claim 12 and Claim 13 are generic to the species of invention covered by claim 3 of the patent. Thus, the generic invention is "anticipated" by the species of the patented invention. Cf., Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (holding that an earlier species disclosure in the prior art defeats any generic claim). This court’s predecessor has held that, without a terminal disclaimer, the species claims preclude issuance of the generic application. In re Van Ornum, 686 F.2d 937, 944, 214 USPQ 761, 767 (CCPA 1982); Schneller, 397 F.2d at 354. Accordingly, absent a terminal disclaimer, claims 12 and 13 were properly rejected under the doctrine of obviosuness-type double patenting" (In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993).
Claim 1 of the current application are generic to the species of invention covered by claim 1 of US Patent No. 8,484,240. Therefore the current application is anticipated by the species of US Patent No. 8,484,240.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 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, 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 negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.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 of the obligation under 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 of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 1-20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Woycik et al. (US Pub. No. 2007/0265935) further in view of Vlahos (US Pub. No. 2004/0204950)
Regarding claim 1, Woycik teaches an apparatus comprising:
‘a non-transitory, computer-readable medium having stored thereon a plurality of instructions that cause a computing device of a delivery service to perform a method (¶0012, 16) comprising:
‘generating a plurality of items based on information received from unrestricted computer terminals, the plurality of items comprising at least one database query entry’ as adding an item, the administrative tool launches a separate items detail screen to edit various item attributes, including text, details, recipe and user defined fields with access to a database from any kiosk (0082, 128, 95, 112-113)
‘receiving an indication of the plurality of items from a first user of the delivery service’ as an administrator templates for selecting items for inclusion in a menu (¶0098-100)
‘receiving respective pieces of information, in which each respective piece of information is associated with a respective item of the plurality of items’ as selecting menu items and other attributes and information associated with selected menu items (¶0098-100, Fig. 11-13)
‘determining a first set of the plurality of items that may be added to a menu for a first merchant from whom customers of the delivery service may order items for delivery’ as a menu editor screen that allows an administrator to add items to a menu to be presented to customers (¶0098-106)
‘determining a respective plurality of pieces of the information that may be associated with each item of the first set’ as associated attributes and information along with the selected menu items (¶0098-106)
‘allowing a user to include one or more of the plurality of items from the first set of the plurality of items in a menu for the first merchant’ as a menu editor screen that allows an administrator to add items to a menu to be presented to customers (¶0098-106)
‘allowing the user to include one or more respective pieces of information from each of the respective plurality of pieces of information to include in the menu’ as including associated attributes and information along with the selected menu items (¶0098-106)
‘determining the menu based on the included items and the included information’ as generating a menu for display on a kiosk for a customer (¶0098-106)
‘receiving a request for the menu’ as a request for a menu from a costumer at a kiosk (¶0072)
‘providing the menu in response to receiving the request for the menu’ as displaying interactive menus screens for a customer to replace orders including men of options (¶0082)
‘receiving a request to purchase one or more of the items of the first set’ as a customer requesting to purchase items (¶0083)
‘in response to receiving the request to purchase, facilitating delivery of the one or more requested items’ as receiving the order and facilitating delivery of the items (¶0093)
Vlahos teaches:
‘generating a plurality of items based on information received from computer terminals’ as database access to generate such database (¶0024)
It would have been obvious to one of ordinary skill in the art at the time that the present invention was effectively filed to modify the teachings of the cited references because Vlahos’ would have allowed Woycik’s to make ordering items more efficient and organized (¶0003)
Regarding claim 2, Woycik teaches ‘in which each respective piece of information includes an option for a respective item’ (¶0082-84)
Regarding claim 3, Woycik teaches ‘in which each option includes an addon option’ (¶0082-84)
Regarding claim 4, Woycik teaches ‘in which each option includes a typing option’ (¶0082)
Regarding claim 5, Woycik teaches ‘in which each option includes at least one of a size option, a topping option, a crust option, a flavor option, and a filling option’ (¶0082-84)
Regarding claim 6, Woycik teaches ‘in which allowing the user to include one or more items from the first set of the plurality of items includes providing an interface for a menu template’ (¶0099)
Regarding claim 7, Woycik teaches ‘in which allowing the user to include one or more respective pieces of information from each of the respective plurality of pieces of information includes providing an interface for a menu template’ (¶0099)
Regarding claim 8, Woycik teaches ‘in which allowing the user to include one or more respective pieces of information from each of the respective plurality of pieces of information and allowing the user to include one or more items from the first set of the plurality of items includes providing an interface for a menu template in which a user may select items from the first set of the plurality of items and options for those selected items from the pieces of information’ (¶0099)
Regarding claim 9, Woycik teaches ‘wherein the method further comprises receiving a structure for the menu template’ (¶0100-103, 112)
Regarding claim 10, Woycik teaches ‘in which the structure defines a position for each item and each option in the menu template’ (¶0100-103)
Regarding claim 11, Woycik teaches ‘in which the structure defines a position for each selected item and each selected option in the menu’ (¶0100-103)
Regarding claim 12, Woycik teaches ‘wherein the method further comprises receiving a structure for the menu, and in which determining the menu includes determining the menu based on the structure’ (¶0100-103, 112)
Regarding claim 13, Woycik teaches ‘further comprising the computing device, in which the computing device includes a processor’ (¶0012)
Regarding claim 14, Woycik teaches a method comprising:
‘generating a plurality of items based on information received from unrestricted computer terminals, the plurality of items comprising at least one database query entry’ as adding an item, the administrative tool launches a separate items detail screen to edit various item attributes, including text, details, recipe and user defined fields with access to a database from any kiosk (0082, 128, 95, 112-113)
‘receiving an indication of a plurality of items from a first user of the delivery service’ as an administrator templates for selecting items for inclusion in a menu (¶0098-100)
‘receiving respective pieces of information, in which each respective piece of information is associated with a respective item of the plurality of items’ as selecting menu items and other attributes and information associated with selected menu items (¶0098-100, Fig. 11-13)
‘determining a first set of the plurality of items that may be added to a menu for a first merchant from whom customers of the delivery service may order items for delivery’ as a menu editor screen that allows an administrator to add items to a menu to be presented to customers (¶0098-106)
‘determining a respective plurality of pieces of the information that may be associated with each item of the first set’ as associated attributes and information along with the selected menu items (¶0098-106)
‘allowing a user to include one or more of the plurality of items from the first set of the plurality of items in a menu for the first merchant’ as a menu editor screen that allows an administrator to add items to a menu to be presented to customers (¶0098-106)
‘allowing the user to include one or more respective pieces of information from each of the respective plurality of pieces of information to include in the menu’ as including associated attributes and information along with the selected menu items (¶0098-106)
‘determining the menu based on the included items and the included information’ as generating a menu for display on a kiosk for a customer (¶0098-106)
‘receiving a request for the menu’ as a request for a menu from a costumer at a kiosk (¶0072)
‘providing the menu in response to receiving the request for the menu’ as displaying interactive menus screens for a customer to replace orders including men of options (¶0082)
‘receiving a request to purchase one or more of the items of the first set’ as a customer requesting to purchase items (¶0083)
‘in response to receiving the request to purchase, facilitating delivery of the one or more requested items’ as receiving the order and facilitating delivery of the items (¶0093)
Vlahos teaches:
‘generating a plurality of items based on information received from computer terminals’ as database access to generate such database (¶0024)
It would have been obvious to one of ordinary skill in the art at the time that the present invention was effectively filed to modify the teachings of the cited references because Vlahos’ would have allowed Woycik’s to make ordering items more efficient and organized (¶0003)
Regarding claim 15, Woycik teaches ‘in which each respective piece of information includes an option for a respective item’ (¶0082-84)
Regarding claim 16, Woycik teaches ‘in which allowing the user to include one or more items from the first set of the plurality of items includes providing an interface for a menu template’ (¶0099)
Regarding claim 17, Woycik teaches ‘in which allowing the user to include one or more respective pieces of information from each of the respective plurality of pieces of information includes providing an interface for a menu template’ (¶0099)
Regarding claim 18, Woycik teaches ‘in which allowing the user to include one or more respective pieces of information from each of the respective plurality of pieces of information and allowing the user to include one or more items from the first set of the plurality of items includes providing an interface for a menu template in which a user may select items from the first set of the plurality of items and options for those selected items from the pieces of information’ (¶0099)
Regarding claim 19, Woycik teaches ‘wherein the method further comprises receiving a structure for the menu, and in which determining the menu includes determining the menu based on the structure’ (¶0100-103, 112)
Regarding claim 20, Woycik teaches a non-transitory, computer-readable medium having stored thereon a plurality of instructions that cause a computing device of a delivery service to perform a method comprising:
‘generating a plurality of items based on information received from unrestricted computer terminals, the plurality of items comprising at least one database query entry’ as adding an item, the administrative tool launches a separate items detail screen to edit various item attributes, including text, details, recipe and user defined fields with access to a database from any kiosk (0082, 128, 95, 112-113)
‘receiving an indication of a plurality of items from a first user of the delivery service’ as an administrator templates for selecting items for inclusion in a menu (¶0098-100)
‘receiving respective pieces of information, in which each respective piece of information is associated with a respective item of the plurality of items’ as selecting menu items and other attributes and information associated with selected menu items (¶0098-100, Fig. 11-13)
‘determining a first set of the plurality of items that may be added to a menu for a first merchant from whom customers of the delivery service may order items for delivery’ as a menu editor screen that allows an administrator to add items to a menu to be presented to customers (¶0098-106)
‘determining a respective plurality of pieces of the information that may be associated with each item of the first set’ as associated attributes and information along with the selected menu items (¶0098-106)
‘allowing a user to include one or more of the plurality of items in a menu for the first merchant’ as a menu editor screen that allows an administrator to add items to a menu to be presented to customers (¶0098-106)
‘allowing the user to include one or more respective pieces of information from each of the respective plurality of pieces of information to include in the menu’ as including associated attributes and information along with the selected menu items (¶0098-106)
‘determining the menu based on the included items and the included information’ as generating a menu for display on a kiosk for a customer (¶0098-106)
‘receiving a request for the menu’ as a request for a menu from a costumer at a kiosk (¶0072)
‘providing the menu in response to receiving the request for the menu’ as displaying interactive menus screens for a customer to replace orders including men of options (¶0082)
‘receiving a request to purchase one or more of the items of the first set’ as a customer requesting to purchase items (¶0083)
‘in response to receiving the request to purchase, facilitating delivery of the one or more requested items’ as receiving the order and facilitating delivery of the items (¶0093)
Vlahos teaches:
‘generating a plurality of items based on information received from computer terminals’ as database access to generate such database (¶0024)
It would have been obvious to one of ordinary skill in the art at the time that the present invention was effectively filed to modify the teachings of the cited references because Vlahos’ would have allowed Woycik’s to make ordering items more efficient and organized (¶0003)
Examiner’s Note
Examiner has cited particular columns/paragraphs and line numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention. This will assist in expediting compact prosecution. MPEP 714.02 recites: “Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP § 2163.06. An amendment which does not comply with the provisions of 37 CFR 1.121(b), (c), (d), and (h) may be held not fully responsive. See MPEP § 714.” Amendments not pointing to specific support in the disclosure may be deemed as not complying with provisions of 37 C.F.R. 1.131(b), (c), (d), and (h) and therefore held not fully responsive. Generic statements such as “Applicants believe no new matter has been introduced” may be deemed insufficient.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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/VAN H OBERLY/ Primary Examiner, Art Unit 2166
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