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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`14/627,703
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`02/20/2015
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`MARK UNAK
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`12/30/2016
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`7590
`”4057
`FLENER 1P LAW, LLC
`77 West Washington Street
`Suite 800
`
`Chicago, IL 60602
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`RNEYDOCKETNO-—
`CU- 100221
`1909
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`W
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`KUJUNDZIQ DINO
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`2179
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`12/30/2016
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`info @ fleneriplaw.c0m
`fleneriplaw_d0cketing @ cardinal-ip.c0m
`
`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Applicant(s)
`Application No.
` 14/627,703 UNAK ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`DINO KUJUNDZIC $2215 2179
`-- The MAILING DA TE 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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () 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).
`
`In no event, however, may a reply be timely filed
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`Status
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`1)IZI Responsive to communication(s) filed on 2/20/2015.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) 1-21 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1 -21 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'I’\WIIW.usnto. ovI’ atentS/init events/
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`
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`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
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`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 02/20/2015 is/are: a)IXI accepted or b)|:l objected to by the Examiner.
`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).
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`Priority under 35 U.S.C. § 119
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`12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
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`b)|:l Some” c)I:l None of the:
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`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`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.
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`Attachment(s)
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`
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`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 06/24/2015.
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20161227
`
`

`

`Application/Control Number: 14/627,703
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`Page 2
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`Art Unit: 2179
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`DETAILED ACTION
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`1.
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`This action is responsive to the following communication: non-provisional
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`application filed on February 20, 2015, and an Information Disclosure Statement filed on
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`June 24, 2015.
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`2.
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`Claims 1-21 are pending in the case; Claims 1, 8, and 15 are independent
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`claims.
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`3.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`4.
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`It is noted that Claim 12 is dependent upon Claim 11 (which is dependent upon
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`independent Claim 8; Claim 13 is dependent upon Claim 12) and although there is
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`proper antecedent basis in Claims 11-13, it appears that Claim 12 should depend from
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`Claim 10 instead of Claim 11; as currently presented, Claim 12 requires "a third
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`response" but there is no mention of "second response" thus Claim 12 can be
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`interpreted as being almost identical to Claim 10 (see also corresponding Claims 5 and
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`19, depending from Claims 3 and 17, respectively).
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`5.
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`Claims 15-21 are directed to a "computing system including a processor and
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`memory" and while the instant Specification states that "the present disclosure may take
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`the form of an entirely software embodiment," it appears that the “system” is intended
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`to be directed toward “an embodiment combining software and hardware aspects" thus
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`"processor and memory" recited in these claims are interpreted as being implemented,
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`at least in part, by hardware (see Specification, 11 0067).
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`It is noted that if the applicant
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`disagrees with this interpretation, that is, in case the applicant intends the system to
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`

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`Application/Control Number: 14/627,703
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`Page 3
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`Art Unit: 2179
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`include the software-only embodiments, Claims 15-21 would be subject to 35 USC §
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`101 rejection as being directed to a non-statutory subject matter (software per se).
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`Claim Rejections - 35 USC § 101
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`35 U.S.C. 101 reads as follows:
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`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
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`6.
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`Claims 8-14 are rejected under 35 U.S.C. 101 because the claimed invention
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`is directed to non-statutory subject matter.
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`Regarding Claims 8—14, independent Claim 8 recites “A computer program
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`product residing on a computer readable medium...” but the instant Specification states
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`that “any suitable computer useable or computer readable medium may be utilized thus
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`the “computer readable medium” as recited herein does not appear to be limited to only
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`statutory embodiments in the instant Specification (see Specification, 11 0068).
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`It is thus
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`not clear that the instant Specification would limit the “computer program product
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`residing on a computer readable medium” only to statutory subject matter.
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`The United States Patent and Trademark Office (USPTO) is obliged to give
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`claims their broadest reasonable interpretation consistent with the specification during
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`proceedings before the USPTO. See In re Z/etz, 893 F.2d 319 (Fed. Cir. 1989) (during
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`patent examination the pending claims must be interpreted as broadly as their terms
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`reasonably allow). The broadest reasonable interpretation of a claim drawn to a
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`computer readable medium (also called machine readable medium and other such
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`variations) typically covers forms of non-transitory tangible media and transitory
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`

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`Application/Control Number: 14/627,703
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`Page 4
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`Art Unit: 2179
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`propagating signals per se in view of the ordinary and customary meaning of computer
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`readable media, particularly when the specification is silent. See MPEP 2111.01.
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`Therefore, the claims are rejected as covering non-statutory subject matter. See In re
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`Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not
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`directed to statutory subject matter) and Interim Examination Instructions for Evaluating
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`Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2.
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`The applicant should note that amending independent Claim 8 to recite a
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`“residing on a non-transitory computer readable medium
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`would overcome this
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`rejection (see David J. Kappos, Official Gazette Notice, “Subject Matter Eligibility of
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`Computer Readable Media,” January 26, 2010, stating that adding “non-statutory” in
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`order to narrow the claim to cover only statutory embodiments to avoid rejection under
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`35 U.S.C. § 101 would not raise the issue of new matter).
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102 of this title, if the differences
`between the claimed invention and the prior art are such that the claimed invention as a whole
`would have been obvious before the effective filing date of the claimed invention to a person
`having ordinary skill in the art to which the claimed invention pertains. Patentability shall not
`be negated by the manner in which the invention was made.
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`

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`Application/Control Number: 14/627,703
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`Page 5
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`Art Unit: 2179
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was
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`commonly owned as of the effective filing date of the claimed invention(s) absent any
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`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effective filing dates of each claim that was not commonly
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`owned as of the effective filing date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
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`7.
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`Claims 1-21 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`David M. Geary (hereinafter Geary), “Graphic Java 1.2, Volume I: AWT," Third
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`Edition, Prentice Hall, published on September 21, 1998.
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`As to independent Claim 1, Geary teaches a computervimplemeoted method,
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`executed on a computer, the computer implemented method comprietog:
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`Application/Control Number: 14/627,703
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`Page 6
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`Art Unit: 2179
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`8
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`rendering a firstwievei rnenu fer an eniine setsiog, wherein the firstwievei menu
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`defines a eitiraiity of iii‘stuievei categories (see Fig“ Trust ngs. 45:65:23, shewing a
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`first ievei rnenu; eitheugh the first ievei menu iiiustrated in Geery snows eniy one
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`item (“more”) a skiiied artisan wenid understand that a cascading menu
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`iiiustrsted in Geary can he peonisted with any desired intermationi inciuding data
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`obtained trem an eniine satsieg representative at eategeries, as is weii~i<znewn in
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`the art}.
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`receiving a first respense trern a user at the sniine eateing that defines a seieeted
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`first~ievei eategery, ehesen from the piureiity st firstsievei eategeries {see Fig. t7~
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`6, eggs, 45668,, iiiustrsting seieotion of en item from the first ievei menu resuiting
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`in a dispisy (it serrespending sunmenu items}.
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`rendering a pitireiity et seeend~ievei eategeries, esseeiated with the seiected tirst~
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`ievei sategery, in s suherdinate fashion with respect te the seieeted iirst—ievei
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`oategnry (see Fig. 176, shewing submenu items rendered within the seseading
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`menu}.1
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`As discussed shaves white Gesry dees net appear te exniieitiy iiiustrete an ontine
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`eetsiog, the cascading rnenii iiiustreted in Geery oan toe nontiieted with verieus data
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`item vai‘iQtJS ssurees, as desired by the user.
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`in edditien, e skiiied artisan weuit‘t
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`understand that such data can he disoieyed using other structures, such as trees,
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`nested sategeries, di‘eedewn ntenos, etc., in a sirniier manner.
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`

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`Application/Control Number: 14/627,703
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`Page 7
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`Art Unit: 2179
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`With respect tr) eepeheeht Cieim 2, Geei’y teeehee whei’eih reheerihg e piereiity
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`ef eeeeht‘i—ievei categeries inductee: rendering a piuraiity ei heheeiectet‘i iiret»
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`ievei categei‘iee (See Fig. i7~6, pg: 4575 eithetigh ehiy ehe item is ehewrr in the
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`first ievei rhehti, ether items withiri that ievei wetiid he showri it the menu was
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`peeuietee es; the cede diepieyeci on pg. 457 eehtihuee te reheer heh—eeieeted
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`menu aptiehsi.
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`With respeet te depehdeht Cieirh 3, Geary teeehee receiving a secehd reepehse
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`from the user {it the ehiirie eeteieg thet eeiihee e eeieeteci eeeehdvievei eetegery,
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`cheeeri item the piureiity ei secehd~ievei categeriee; and rendering a pitii‘eiiiy ei
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`thirttievei eategeriee, eeeecieted with the seiected secehd~ievei eategery, in a
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`euhereihete taehieh with reepect t0 the eeieetee eeeehd—ievei category (see Fig.
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`176, ege. 45668, ehewihg eeieetieh at e euhmehu item (”yet more”) resetting in
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`a diepiay at suheuhmehu items).
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`With respeet te depehdeht Cieirh it, Geary teeehee whereih rehderihg a piureiity
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`ei 'thire-ievei caiegeriee ii’iCiLidi—BSZ renderihg e piureiity e‘i hen—eeieeted iir‘et—ievei
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`eategei‘ies arid her'i—eeiected SECSi‘idwiSVt—Z‘i categeries (see Fig. i7~6, pg. 45?: see
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`aiee discussion ei‘ Ciaim 2i aheve}.
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`With reepeet 'te depeheeht Stein“: 5, eitheugh Geery eeee het appear it) expiieitiy
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`dieeiese “receiving a third i‘eepehse irem the user {if the ehiihe ceteieg that
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`

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`Application/Control Number: 14/627,703
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`Page 8
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`Art Unit: 2179
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`defines a selected third~ievei category, chosen from the piuratity of third~ievet
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`categories; and rendering a piuraiity oi teui‘ti'i~ievei categories, associated with
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`the seiected thirduievei category in a subordinate fashion with respect to the
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`seiected third—ievei category” at skiiied artisan wouid understand that any number
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`of submehus, suhsuh—mehus, etc, cart he created usihg the ‘iuhctiohaiity
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`described above (see pg. 457}.
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`With respect to depehdeht Ciairh E, Geary teaches wherein rehderihg a piuraiity
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`of tourth—ievei categories includes: rehderihg a piui’aiity of hehvseiected firstvievei
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`categories nen~seiected secohd~ievei categories, and honeseiected third~ievei
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`categories (see discussion of Ciaims 2 and 5, above}.
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`With respect to depehtieht Stein: 7, Geary teaches wherein the pturaiity of first—
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`ievei categories defines a plurality of product categories of the ohiine cataiog
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`(see discussion of Giaim 'i, above}
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`With respect to Claims 8-21, these claims are directed to a computer program
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`product and a computing system comprising steps and/or features corresponding to
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`those recited in Claims 1-7, respectively, and are thus rejected under the same rationale
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`as those claims, above.
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`

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`Application/Control Number: 14/627,703
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`Page 9
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`Art Unit: 2179
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`A reference to specific paragraphs, columns, pages, or figures in a cited prior art
`reference is not limited to preferred embodiments or any specific examples. It is
`well settled that a prior art reference, in its entirety, must be considered for all
`that it expressly teaches and fairly suggests to one having ordinary skill in the
`art. Stated differently, a prior art disclosure reading on a limitation of Applicant's
`claim cannot be ignored on the ground that other embodiments disclosed were
`instead cited. Therefore, the Examiner‘s citation to a specific portion of a single
`prior art reference is not intended to exclusively dictate, but rather, to
`demonstrate an exemplary disclosure commensurate with the specific
`limitations being addressed. In re Heck, 699 F.2d 1331, 1332-33,216 USPQ 1038,
`1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006,1009, 158 USPQ 275,
`277 (CCPA 1968)). In re: Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319,
`1323, 75 USPQZd 1213, 1215 (Fed. Cir. 2005); In re Fritch, 972 F.2d 1260, 1264, 23
`USPQZd 1780, 1782 (Fed. Cir. 1992); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
`804, 807, 10 USPQZd 1843, 1846 (Fed. Cir. 1989); In re Fracalossi, 681 F.2d
`792,794 n.1,215 USPQ 569, 570 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747,
`750, 192 USPQ 278, 280 (CCPA 1976); In re Bozek, 416 F.2d 1385, 1390, 163
`USPQ 545, 549 (CCPA 1969).
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure. As mentioned above, there are various well-known ways the
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`general functionality of displaying menus, sub-menus, subsub-menus, etc. as recited in
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`the currently presented claims can be achieved. The list below provides a brief
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`summary of some of the prior art that discloses or suggests the claimed functionality in
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`addition or in alternative to Geary:
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`as Detweiler et al. (US 2003/0202019 A1) illustrates hierarchical tree with nested
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`categories.
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`a Chittu et al. (US 2002/0107892 A1) illustrates a dynamic tree control system.
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`as Moehrle (US 2003/0227491 A1) illustrates navigating a multi-level hierarchical
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`collapsing menu structure where prior levels of hierarchy remain displayed.
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`

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`Application/Control Number: 14/627,703
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`Page 10
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`Art Unit: 2179
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to DINO KUJUNDZIC whose telephone number is
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`(571 )270-5188. The examiner can normally be reached on M-F, 8am-5pm EST.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Weilun Lo can be reached on (571)272-4847. The fax phone number for
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`the organization where this application or proceeding is assigned is 571 -273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/DINO KUJUNDZIC/
`
`Primary Examiner, Art Unit 2179
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`