Apple, Inc.v.Ameranth, Inc.

Patent Trial and Appeal Board

Mar 20, 2015

10016517 (P.T.A.B. Mar. 20, 2015)

Trials@uspto.gov Paper 37
571-272-7822 Entered: March 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE, INC., DOMINO’S PIZZA, INC., DOMINO’S PIZZA, LLC,
FANDANGO, LLC, AND OPENTABLE, INC.,
Petitioner,

v.

AMERANTH, INC.,
Patent Owner.
____________

Case CBM2014-00013
Patent No. 6,982,733 B1
____________

Before JAMESON LEE, MEREDITH C. PETRAVICK, and
NEIL T. POWELL, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

FINAL WRITTEN DECISION
Covered Business Method Patent Review
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
CBM2014-00013
Patent 6,982,733 B1

2
I. INTRODUCTION
Apple Inc., Fandango, LLC, OpenTable, Inc., Domino’s Pizza, Inc.,
and Domino’s Pizza, LLC (collectively, “Petitioner”) filed a Petition (Paper
10, “Pet.”) requesting review under the transitional program for covered
business method patents of claims 1–16 of U.S. Patent No. 6,982,733 B1
(Ex. 1033, “the ’733 patent”). On March 26, 2014, pursuant to 35 U.S.C.
§ 324, we instituted this trial as to claims 1–16 on the proposed ground of
unpatentability under 35 U.S.C. § 101. Paper 23 (“Dec. to Inst.”).
Ameranth, Inc. (“Patent Owner”) filed a Patent Owner Response (Paper 29,
“PO Resp.”) and Petitioner filed a Reply (Paper 30, “Reply”).
An oral hearing in this proceeding was held on October 24, 2014. A
transcript of the hearing is included in the record (Paper 34, “Tr.”). The oral
hearing was consolidated with the oral hearing for related CBM2014-00015
and CBM2014-00016.
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1, 2, 4, 5, 10, and 12 of the ’733
patent are unpatentable.
A. The ’733 Patent
The ’733 patent relates to an information management and
synchronous communication system and method for generating and
transmitting computerized menus for restaurants. Ex. 1033, Abstract.
Figure 1 of the ’733 patent is reproduced below:
CBM2014-00013
Patent 6,982,733 B1

3

Figure 1 is a schematic representation of the menu display/user interface of
the preferred embodiment of the ’733 patent.
As shown in Figure 1, Graphical User Interface (“GUI”) 1 includes
menu tree 7, modifiers window 8, and sub-modifiers window 9. Id. at col. 7,
ll. 44–48. GUI 1 is used to build a menu on a desktop or other computer.
Id. at col. 7, ll. 28–29. Menu items are categorized and displayed in a
hierarchical manner in menu tree 7. Modifiers (e.g., salad dressing) are
shown in modifiers window 8, and sub-modifiers (e.g., Italian dressing,
French dressing, Ranch dressing, etc.) are shown in sub-modifiers window
9. Id. at col. 7, ll. 30–36. Once the menu is built using GUI 1, the menu
may be downloaded to a handheld device or web page. Ex. 1033, col. 10,
ll. 1–9, col. 11, ll. 12–18.
CBM2014-00013
Patent 6,982,733 B1

4
Figure 7 is reproduced below:

Figure 7 depicts the interface on a typical wireless device used in conformity
with the invention of the ’733 patent.
As shown in Figure 7, “the page menu is displayed in a catalogue-like point-
and-click format . . . [thereby allowing] a person with little expertise [to]
‘page through’ to complete a transaction with the POS [point of sale]
interface and avoid having to review the entire menu of Fig. 1 to place an
order.” Ex. 1033, col. 11, ll. 34–39. This interface could be shown on a
PDA or web page. Id. at col. 11, l. 40.
CBM2014-00013
Patent 6,982,733 B1

5
Figure 8 is reproduced below:

Figure 8 depicts the handwritten screen according to one embodiment of the
’733 patent.
In one embodiment, a server may take a drink order by selecting “Iced
Tea” from the menu on the handheld device. Ex. 1033, col. 4, ll. 6-7. As
shown in Fig. 8, the server then may manually modify the order by writing
“w/ lemon” on the screen on the device. Id. at col. 4, ll. 7–9, Fig. 8. The
manually modified drink order is then presented to the individual preparing
the drinks. Id. at col. 4, ll. 9–11.

B. Illustrative Claims
Claims 1 and 12 of the ’733 patent are illustrative of the claims at
issue and read as follows:
1. An information management and synchronous
communications system for generating and transmitting menus
comprising:
a. a central processing unit,
b. a data storage device connected to said central
processing unit,
CBM2014-00013
Patent 6,982,733 B1

6
c. an operating system including a graphical user
interface,
d. a first menu consisting of menu categories, said menu
categories consisting of menu items, said first menu
stored on said data storage device and displayable in a
window of said graphical user interface in a hierarchical
tree format,
e. a modifier menu stored on said data storage device and
displayable in a window of said graphical user interface,
f. a sub-modifier menu stored on said data storage device
and displayable in a window of said graphical user
interface, and
g. application software for generating a second menu
from said first menu and transmitting said second menu
to a wireless handheld computing device or Web page,
wherein the application software facilitates the
generation of the second menu by allowing selection of
categories and items from the first menu, addition of
menu categories to the second menu, addition of menu
items to the second menu and assignment of parameters
to items in the second menu using the graphical user
interface of said operating system, said parameters being
selected from the modifier and sub-modifier menus,
wherein said second menu is manually modified after
generation.

12. In a computer system having an input device, a storage
device, a video display, an operating system including a
graphical user interface and application software, an
information management and synchronous communications
method comprising the steps of:
a. outputting at least one window on the video display;
b. outputting a fist menu in a window on the video
display;
c. displaying a cursor on the video display;
CBM2014-00013
Patent 6,982,733 B1

7
d. selecting items from the first menu with the input
device or the graphical user interface;
e. inserting the items selected from the first menu into a
second menu, the second menu being output in a
window;
f. optionally adding additional items not included in the
first menu to the second menu using the input device or
the graphical user interface;
g. storing the second menu on the storage device; and
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,
and wherein said second menu is manually modified after
generation.

C. Related Proceedings
Both parties identify numerous related ongoing district court
proceedings. Pet. 10–11; Paper 3, 4–5.
In addition, Petitioner requested covered business method patent
review of the following related patents: U.S. Patent No. 6,348,850
(CBM2014-00015; “the ’850 patent”) and U.S. Patent No. 8,871,325
(CBM2014-00016). We instituted covered business method patent review in
CBM2014-00015 and CBM2014-00016, and final written decisions in those
proceedings are entered concurrently with this decision.
Petitioner also requested covered business method patent review of
related U.S. Patent No. 8,146,077 (CBM2014-00014). We did not institute
covered business method patent review in CBM2014-00014.

CBM2014-00013
Patent 6,982,733 B1

8
D. Alleged Ground of Unpatentability
Petitioner alleges that claims 1–16 are unpatentable under 35 U.S.C.
§ 101.

II. ANALYSIS
A. Arguments Incorporated By Reference
In footnote 10 on pages 12–13 of the Patent Owner Response, Patent
Owner attempts to incorporate certain arguments made in its Preliminary
Response (Paper 13) into the Patent Owner Response. Our rules prohibit
incorporating arguments by reference. 37 C.F.R. § 42.6(a)(3) states:
“[a]rguments must not be incorporated by reference from one document into
another document.” Incorporation by reference circumvents our rule
limiting the pages in the Patent Owner response to 80 pages. See 37 C.F.R.
§ 42.24(b)(2). Arguments that are not developed and presented in the Patent
Owner Response, itself, are not entitled to consideration. See Paper 24, 2–3.
(cautioning Patent Owner “that any arguments for patentability not raised
and fully briefed in the response will be deemed waived”).

B. Claim Construction
The Board interprets claims of unexpired patents using the broadest
reasonable construction in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.300(b). Under the broadest reasonable
construction standard, claim terms are given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). Any special definition for a claim term must be set
CBM2014-00013
Patent 6,982,733 B1

9
forth with reasonable clarity, deliberateness, and precision. In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition,
limitations are not to be read from the specification into the claims. In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Prior to construing the relevant claim limitations, we turn to some
initial matters raised by Patent Owner. First, Patent Owner argues that we
must construe “the entirety of the challenged claims” (PO Resp. 31), and
proposes constructions for some, but not all, limitations of the challenged
claims (see id. at 34–36). Claim construction, however, “is not an inviolable
prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C.
v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed.
Cir. 2012). See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to
be construed, and only to the extent necessary to resolve the controversy).
Below, we construe the limitations that are relevant to the issues of patent-
eligibility discussed below. We determine that all other claim limitations
need no explicit construction.
Second, Patent Owner urges us to adopt all previous judicial
constructions and, in particular, the constructions of United States District
Court for the Eastern District of Texas Marshall Division (see Ex. 2014–
2016). PO Resp. 30. Petitioner also relies upon previous judicial
constructions (see Ex. 2017) to support its arguments. See Reply 4.
However, the standard for claim construction in a district court infringement
action is different than the standard applied by the Board. See In re Morris,
127 F.3d 1048, 1053–54 (Fed. Cir. 1997). In covered business method
patent review proceedings, the Board applies the broadest reasonable
CBM2014-00013
Patent 6,982,733 B1

10
construction consistent with the specification. 37 C.F.R. § 42.300(b); see
also SAP Am., Inc. v. Versata Dev. Grp., Inc., Case CBM2012-00001, slip
op. at 7–18 (PTAB June 11, 2013) (Paper 70) (discussing adoption of the
broadest reasonable interpretation standard).
i. Preamble
The preamble of independent claim 1 recites “[a]n information
management and synchronous communications system for generating and
transmitting menus.” The preamble of independent claims 4 and 5 each
recites “[a]n information management and synchronous communication
system for generating menus.” The preamble of independent claim 12
recites “an information management and synchronous communications
method.” Petitioner and Patent Owner dispute whether the preambles limit
these claims. Reply 3–7; PO Resp. 34, 35–36.
Patent Owner argues that the preambles are limiting because “[t]erms
are recited in the preamble which do not appear in the remainder of the
claims and ‘synchronous communications system’ is necessary to define the
synchronization functionality of the first menus and the second menus on the
back[-]office server (central database) and the handheld device/Web pages.”
PO Resp. 36. According to Patent Owner, the preamble should be construed
as “a computerized system having multiple devices in which a change to
data made on a central server is updated on client devices and vice versa.”
Id. at 34; see id. at 36–37. Patent Owner also argues that the preamble is
limiting because the Specification describes that a synchronous
communications system is important (id. (citing Ex. 1033, Title, Abstract,
col. 3, ll. 9–15, 59–67)), and because the Examiner of the related ’850 patent
CBM2014-00013
Patent 6,982,733 B1

11
relied upon the preamble during prosecution to distinguish over the prior art
(id.).
Petitioner argues that the preambles are non-limiting because the
preamble does not recite any structural components not captured in the body
of the claims and “merely sets forth the purpose (‘information management
and synchronous communication’) and intended use (‘for generating and
transmitting menus’) of the claimed invention.” Reply 3–6. Petitioner
argues that Patent Owner’s proposed construction improperly reads in a
distributed system that includes a central server and client devices and
improperly excludes a preferred desktop PC embodiment from the claims.
Reply 6–7. Petitioner further argues that, contrary to Patent Owner’s
assertion, the Examiner did not rely upon the preamble to distinguish over
the prior art. Id. at 5–6.
“In general, a preamble limits the invention if it recites essential
structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co.,
182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not limiting
where the claim body defines a structurally complete invention and the
preamble only states a purpose or intended use for the invention. Id.
The bodies of the independent claims 1, 4, and 5 recite a system that
includes a central processing unit (“CPU”) or microprocessor; a data storage
device, a display device; a data input device; an operating system with a
GUI, a first (i.e., master) menu, a modifier menu, a sub-modifier menu, and
application software. The application software is capable of generating a
second (i.e., modified) menu from said first menu. The application software
CBM2014-00013
Patent 6,982,733 B1

12
is capable of transmitting or synchronizing the second menu to another
computing device. Claim 1 recites that the other computing device is such a
wireless handheld computing device or Web page.
As can be seen from the above, the bodies of the independent claims
1, 4, and 5 recite a structurally complete invention; one that corresponds to
the embodiment that has a desktop PC and a menu configuration application
described in the Specification at column 7, line 24 thru column 10, line 15
and depicted in Figure 1. As described in the Specification, a menu is
updated using the GUI of the menu configuration application and, then, the
updated menu is downloaded to a connected handheld device by clicking on
a “Download Database” item or icon in GUI 1. Ex. 1033, col. 10, ll. 1–9;
see id. at col. 3, ll. 24–28, col. 7, ll. 38–41, col. 8, l. 29. Thus, the updated
menu is the same on the desktop PC and the handheld device. At the oral
hearing, Patent Owner indicated that downloading is synchronizing, as
“[i]t’s making something the same with something else.” See Tr. 28.
Claim 12’s preamble recites “an information management and
synchronous communications method.” The body of claim 12 recites
multiple steps that require outputting of a first menu, selecting items from
the first menu, inserting the selected items into a second menu, adding items
to the second menu, storing the second menu, and a step of synchronizing
the second menu between a storage device and another data storage medium.
Given this, we determine that the preamble does not recite any essential
steps not already recited in the body of claim 12.
For these reasons, we agree with Petitioner that the preambles of
claims 1, 4, and 5 are non-limiting because they do not recite any structural
components not already captured in the body of the claim and merely set
CBM2014-00013
Patent 6,982,733 B1

13
forth the purpose and intended use of the claimed invention. Also, the
bodies of the claims already possess life, meaning, and vitality, without
importing anything from the preamble. Further, claim 12’s recitation of
“information management and synchronous communications method” is
non-limiting because the body of claim 12 already possesses life, meaning,
and vitality, without importing anything from the preamble.
We further are not persuaded by Patent Owner’s argument that the
preamble is limiting, because the argument is based upon a proposed
construction that is overly narrow. Patent Owner’s proposed construction
implies that a synchronous communication system requires a central back-
office server that communicates data updates to and from multiple client
devices. Although the Specification describes communication between a
central back-office server and client devices (e.g., see Ex. 1033, col. 1, ll.
41–59), we see nothing in the Specification, and Patent Owner points to
nothing, that suggests that a synchronous communication system is required
to include these elements. Patent Owner’s proposed construction attempts to
import these extraneous elements from the Specification into the claim. If a
feature is not necessary to give meaning to what the inventor means by a
claim term, it would be “extraneous,” and should not be read into the claim.
Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed.
Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849
F.2d 1430, 1433 (Fed. Cir. 1988).
Further, we are not persuaded by Patent Owner’s argument that the
preamble is limiting because the Examiner of the related ’850 patent relied
upon the preamble during prosecution to distinguish over the prior art, as
evidenced by the Examiner’s reasons for allowance (PO Resp. 36). Clear
CBM2014-00013
Patent 6,982,733 B1

14
reliance on the preamble during prosecution to distinguish the claimed
invention from the prior art may transform the preamble into a claim
limitation. Catalina, 289 F.3d at 808 (citation omitted). The Examiner’s
reasons for allowance for the related ’850 patent do not show that the
preamble clearly was relied upon during the prosecution of the ’733 patent.
Further, contrary to the Patent Owner’s argument, the Examiner’s reasons
for allowance in the ’850 patent indicate that the claimed sub-modifier menu
and the claimed application software are the uniquely distinct features, and
not the synchronous communication system of the preamble. Ex. 1035, 7.
For the reasons discussed above, we are persuaded by Petitioner that
the preambles are non-limiting.
ii. “central processing unit”
Independent claims 1 and 4 recite a “central processing unit.” Patent
Owner proposes that CPU be construed as a “central server.” PO Resp. 34,
37. According to Patent Owner, its construction takes into account “the
centralized nature of the control over the recited menu generation and
synchronous transmission functionally of the central processing unit”
described in the Specification. Id. at 37.
Petitioner argues that there is nothing in the “intrinsic evidence [that]
offers any alternative definition of this common technical term” and argues
that Patent Owner’s proposed construction is contrary to the Specification,
which equates the CPU to a microprocessor. Reply 7 (citing Ex. 1033,
col. 6, ll. 52–54, 63–65). Petitioner proposes that CPU should be construed
according to its ordinary and customary meaning, which is “the
computational and control unit of a computer.” Pet. 41 (citing MICROSOFT
COMPUTER DICTIONARY, 115 (4th ed. 1999)).
CBM2014-00013
Patent 6,982,733 B1

15
We are persuaded by Petitioner that the broadest reasonable
construction in light of the Specification of the term CPU is the
computational and control unit of a computer. Petitioner’s construction is
consistent with the Specification, which describes that the system of the ’733
patent uses typical hardware elements in the form of a computer workstation
and that “a typical workstation platform includes hardware such as a central
processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1033,
col. 6, ll. 52–54; see also id. at col. 6, l. 65 (“a CPU, e.g., Pentium®
microprocessor”). Further, Petitioner’s construction is consistent with the
Specification, which as discussed above, discloses using a desktop PC to
generate and download menus to a connected handheld device (see id. at
col. 7, l. 38–col. 10, l. 15), as well as, discloses the use of a central back-
office server (e.g., see id. at col. 2, ll. 37–40). Patent Owner’s proposed
construction improperly reads into the claims the central back-office server.
See Renishaw, 158 F.3d at 1249 (explaining that extraneous features should
not be read into the claims).
For these reasons, we determine that the broadest reasonable
construction, in light of the Specification, of CPU is the computational and
control unit of a computer.
iii. “Web page”
Neither Petitioner nor Patent Owner contests the construction of the
term “Web page” in the Decision to Institute. See PO Resp. 39; Reply 2.
We construed Web page to mean “a document with associated files for
graphics, scripts, and other resources, accessible over the internet and
viewable in a web browser.” Dec. on Inst. 9–10.
CBM2014-00013
Patent 6,982,733 B1

16
iv. “menu”
Petitioner does not propose explicitly a construction of menu, but
argues that the claim terms should be given their ordinary and customary
meaning. Pet. 30–31. Patent Owner proposes that menu should be
construed as “computer data representing collections of linked levels of
choices or options intended for display in a graphical user interface.” PO
Resp. 35, 40–41 ((referring to a construction by a district court); see Ex.
2014, 11–12). Patent Owner, however, provides no analysis as to why the
district court’s construction is the broadest reasonable construction in light
of the Specification. PO Resp. 35, 40–41.
We are not persuaded by Patent Owner that its proposed construction
is the broadest reasonable construction in light of the Specification. We see
nothing in the Specification, and Patent Owner does not point to anything in
the Specification, that provides support for Patent Owner’s proposed
construction, in particular that the menus have a “linked levels” feature.
Although the Specification discloses some menus that are linked to
additional menus, this “linked levels” feature is extraneous and should not
be read from the Specification into the claim. See Ex. 1033, col. 6, ll. 37–46
(“File options can have additional subordinate or child options associated
with them. If a file option having a subordinate option is selected . . .”
(emphases added)).
We give “menu” its ordinary and customary meaning. RANDOM
HOUSE WEBSTER’S COLLEGE DICTIONARY defines menu as “a list of options
available to a user as displayed on a computer or TV screen.” RANDOM
HOUSE WEBSTER’S COLLEGE DICTIONARY, 520 (2nd ed. 1997). This
definition is consistent with the Specification, which describes menus as
CBM2014-00013
Patent 6,982,733 B1

17
providing choices or options in a GUI. See Ex. 1033, col. 5, ll. 32–34; see
Figure 1 (depicting a menu, a modifier menu, and a sub modifier menu).
For these reasons, we determine that the broadest reasonable
construction, in light of the Specification, of “menu” is a list of options
available to a user displayable on a computer.
v. “manually modified”
Petitioner does not propose explicitly a construction of “manually
modified” but argues that the claim terms should be given their ordinary and
customary meaning. Pet. 40–41. Patent Owner proposes that “manually
modified” should be construed as “effecting a change as a result of a user’s
input or request.” PO Resp. 35–36, 42–43.
Patent Owner’s proposed construction is consistent with the ordinary
and customary meaning of the claim terms (see Ex. 3002 (providing a
dictionary definition of “manual” and “modify”)) and is consistent with the
Specification, which describes embodiments that make manual
modifications by handwritten screen captures or voice recorded messages,
coupled to the standard menus (Ex. 1033, col. 3, l. 48–col. 4, l. 56). On this
record, we determine that Patent Owner’s proposed construction is the
broadest reasonable construction, in light of the Specification.
Claims 1 and 5 each recite “wherein said second menu is manually
modified after generation.” Claim 4 recites “wherein said second menu is
manually modified by handwriting or voice recording after generation.” As
discussed in our Decision to Institute, theses clauses are “a further limitation
regarding the application software’s ability to facilitate the generation of the
second menu.” Dec. to Inst. 18. Given our construction of “manually
modified” above, we determine that claims 1 and 5 require application
CBM2014-00013
Patent 6,982,733 B1

18
software that is capable of facilitating the generation of a second menu that
is capable of being manually modified after generation. Claim 4 requires
application software that is capable of facilitating the generation of a second
menu that is capable of being manually modified by handwriting or voice
recording after generation.

C. 35 U.S.C. § 101
Petitioner challenges claims 1–16 of the ’733 patent as claiming
patent-ineligible subject matter under 35 U.S.C. § 101. Pet.49–60; Reply 8–
15. According to Petitioner, the claims are directed to the abstract idea of
generating a menu and do not contain additional limitations that
meaningfully limit the abstract idea to a practical application. Id.
Patent Owner disagrees and contends that the claims are patent-
eligible because they recite a machine and not an abstract idea and because
they recite specialized software that synchronously generates and wirelessly
transmits non-PC standard handheld menus comprised of multi-tiered levels
of components. PO Resp. 44–80.
a. Section 101 Subject Matter Eligibility
For claimed subject matter to be patentable eligible, it must fall into
one of four statutory classes set forth in 35 U.S.C. § 101: a process, a
machine, a manufacture, or a composition of matter. The Supreme Court
recognizes three categories of subject matter that are ineligible for patent
protection: “laws of nature, physical phenomena, and abstract ideas.” Bilski
v. Kappos, 130 S. Ct. 3218, 3225 (2010) (internal quotations and citation
omitted). A law of nature or an abstract idea by itself is not patentable;
however, a practical application of the law of nature or abstract idea may be
CBM2014-00013
Patent 6,982,733 B1

19
deserving of patent protection. Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). To be patentable, however, a
claim must do more than simply state the law of nature or abstract idea and
add the words “apply it.” Id.
In Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the
Supreme Court recently clarified the process for analyzing claims to
determine whether claims are directed to patent-ineligible subject matter. In
Alice, the Supreme Court applied the framework set forth previously in
Mayo, “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If they are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims “individually and ‘as an ordered combination’” to determine
whether there are additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
1291, 1297). In other words, the second step is to “search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting
Mayo, 132 S. Ct. at 1294). Further, the “prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or adding ‘insignificant
postsolution activity.’” Bilski, 130 S. Ct. at 3230 (quoting Diamond v.
Diehr, 450 U.S.175, 191–92 (1981)).
CBM2014-00013
Patent 6,982,733 B1

20
The patents at issue in Alice claimed a “method of exchanging
financial obligations between two parties using a third-party intermediary to
mitigate settlement risk.” Alice, 134 S. Ct. at 2356. Like the method of
hedging risk in Bilski, 130 S. Ct. at 3240 — which the Court deemed “a
method of organizing human activity” — Alice’s “concept of intermediate
settlement” was held to be “‘a fundamental economic practice long prevalent
in our system of commerce.’” Alice, 134 S. Ct. at 2356. Similarly, the Court
found that “[t]he use of a third-party intermediary . . . is also a building
block of the modern economy.” Id. “Thus,” the Court held, “intermediate
settlement . . . is an ‘abstract idea’ beyond the scope of § 101.” Id.
Accordingly, utilizing this framework, we analyze claims 1–16 of the
’733 patent to determine whether these claims are directed to patent-
ineligible subject matter.
b. Ineligible Concept
Petitioner argues that the claims are directed to the abstract idea of
generating menus. Pet. 62–68; Reply 9–10. Patent Owner argues that the
claims “are not directed to an ‘idea’ at all; they are directed to a new
machine.” PO Resp. 46 (emphasis omitted).
Nominally, the claimed subject matter of claims 1, 4, and 5 is a
machine and the claimed subject matter of claim 12 is a process. A machine
or process is one of the four categories of statutory subject matter. Statutory
class, however, is not by itself determinative of whether a claim is directed
to patent eligible subject matter. “Regardless of what statutory category
(‘process, machine, manufacture, or composition of matter,’ 35 U.S.C.
§ 101) a claim’s language is crafted to literally invoke, we look to the
underlying invention for patent-eligibility purposes.” CyberSource Corp. v.
CBM2014-00013
Patent 6,982,733 B1

21
Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011). See Alice, 134
S. Ct. 2358–2359; Bancorp Servs. v. Sun Life Assurance Co., 687 F.3d 1266,
1275 (Fed. Circ. 2012).
The independent claims recite a system or process that generates a
second menu, which is capable of being manually modified after generation,
from a first menu. As discussed in section I(A) above, the Specification
discloses a user generating a menu by adding or deleting menu categories,
such as salads or desserts; menu items, such as caesar salad or green salad;
menu modifiers, such as dressing; and menu sub-modifiers, such as ranch or
blue cheese, to create the second menu. Ex. 1033, col. 7, l. 38–col. 10, l. 15.
The Specification states:
[w]hile the preferred embodiment of the invention includes the
selection of items from a master menu wherein the master menu
is displayed using a graphical user interface, it is to be
appreciated that any means for displaying the master menu to
the user and generating another menu in response to and
comprised of the selections made is encompassed by the
contemplated invention.
Id. at col. 15, ll. 1–7.
Independent claim 1 also recites that the system transmits the
second menu to a wireless handheld computing device or Web page,
and independent claims 4, 5, and 12 recite that the system is
synchronized between the data storage device and at least one other
computing device. In that regard, the Specification states:
[t]he inventive concept encompasses the generation of a menu
in any context known to those skilled in the art where an object
is to facilitate display of the menu so as to enable selection of
items from that menu. . . . Likewise, displaying menus
generated in accordance with the invention on PDAs and Web
pages to facilitate remote ordering are but a few examples of
CBM2014-00013
Patent 6,982,733 B1

22
ways in which such menu might be used in practice. Any
display and transmission means known to those skilled in the
art is equally usable with respect to menus generated in
accordance with the claimed invention.
Id. at col. 15, ll. 31–42.
Given the above, we determine that the claims are directed to the
abstract idea of generating a second menu from a first menu and sending the
second menu to another location.
c. Inventive Concept
Next, we look for additional elements that can “transform the nature
of the claim” into a patent-eligible application of an abstract idea. That is,
we determine whether the claims include an “inventive concept,” i.e., an
element or combination of elements sufficient to ensure that the patent in
practice amounts to significantly more than a patent on the abstract idea
itself. Alice, 134 S. Ct. at 2357. The Supreme Court in Alice cautioned that
merely limiting the use of abstract idea “to a particular technological
environment” or implementing the abstract idea on a “wholly generic
computer” is not sufficient as an additional feature to provide “practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.” Alice, 134 S. Ct. at 2358.
i. Independent Claim 1
Petitioner argues that the claims require nothing more than a general
purpose computer using general purpose programming because the
Specification, itself, discloses that the system of the ’733 patent uses typical
computer equipment and commonly known programming steps. See Pet.
55–56, 60–64; Reply 8–15. Patent Owner argues that the claims recite
specialized software that synchronously generates and wirelessly transmits
CBM2014-00013
Patent 6,982,733 B1

23
non-PC standard handheld menus comprised of multi-tiered levels of
components. PO Resp. 44–80.
Independent claim 1 recites a CPU, a data storage device, and an
operating system with a GUI. The Specification states that “the present
invention uses typical hardware elements in the form of a computer
workstation, operating system and application software elements which
configure the hardware elements for operation in accordance with the
present invention.” Ex. 1033, col. 6, ll. 46–52. CPUs and data storage
devices are described as “typical hardware elements.” Id. at col. 6, ll. 48–49.
The Specification also discloses that the use of GUI operating systems, such
as Microsoft Windows® and Window CE® for handheld wireless device,
were known, and that GUIs were a known means for allowing a user to
manipulate data. Id. at col. 6, ll. 6–30. Given this, we determine that these
claim elements require nothing more than a generic computer with generic
computer elements performing generic computer functions. Merely reciting
a generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention. Alice, 134 S. Ct. at 2358. Using a graphical user
interface, a known way for a user to interact with the computer, does not
change the generic nature of the computer.
The independent claim 1 also recites a first menu, a modifier menu,
and a sub-modifier menu stored on the data storage device and displayable
in a window of a GUI. The first menu is displayable in a hierarchical tree
format. The Specification discloses that the use of a data storage device to
store data is “typical” and the displaying of menus in a hierarchical format in
a GUI is “conventional.” See Ex. 1033, col. 6, ll. 31–32, 52–56, col. 7, ll. 4–
23. Given this, we determine that storing the menus on the data storage
CBM2014-00013
Patent 6,982,733 B1

24
device is nothing more than routine data gathering and does not transform
the abstract idea into a patent-eligible invention. See CyberSource, 654 F.3d
at 1370. Further, displaying menus in a GUI, including in a hierarchical
format, is a well-understood, routine, conventional activity that does not add
significantly more to the abstract idea. Mayo, 132 S. Ct. at 1298.
The claim, further, recites application software that functions to
generate a second menu from a first menu by selecting menu categories and
items from the first menu, adding menu categories and item to the second
menu, and selecting parameters from modifier and sub-modifier menus to
assign to items in the second menu. The Specification discloses that GUIs
that display menus from which records can be created, deleted, modified, or
arranged are conventional. Ex. 1033, col. 6, ll. 6–32; col. 7, ll. 4–23: see
also col. 12, ll. 62–65 (“the discrete programming steps are commonly
known”). To add significantly more to the abstract idea, additional features
must be more than well-understood, routine, conventional activity. Mayo,
132 S. Ct. at 1298.
Claim 1 recites that the application software also functions to transmit
the second menu to a wireless handheld computing device or Web page. As
discussed above in section II(B)(i), the Specification discloses that the menu
is transmitted to the wireless handheld device and Web page by
downloading. Ex. 1033, col. 10, ll. 1–9 (describing downloading the new
menu to a connected PDA); see also id. at col. 3, ll. 42–43, col. 6, ll. 33–36,
col. 7, l. 26, col. 10, ll. 12–14 (describing downloading the new menu to a
wireless handheld device and Web page). Such downloading is merely a
conventional post-solution activity. Conventional post-solution activity is
CBM2014-00013
Patent 6,982,733 B1

25
not sufficient to transform the abstract idea into patent-eligible subject
matter. See Parker v. Flook, 437 U.S. 584, 590–92 (1978).
As discussed above in section II(B)(iv), claim 1 also recites that the
“second menu is manually modified after generation,” and we have
construed this limitation as requiring the application software to be capable
of facilitating the generation of a second menu that is capable of being
changed, after generation, as a result of a user’s input or request. This
encompasses a second menu that is capable of being changed by being
written upon by a user after generation and after being printed. The
Specification discloses that menus are commonly printed on paper (Ex.
1033, col. 2, ll. 10–11) and that it is known to use pen and paper in the
hospitality industry (see id. at col. 1, ll. 27–35). See Reply 11–12. This
claim element is nothing more than insignificant post solution activity and is
not sufficient to transform the abstract idea into patent-eligible subject
matter. See Flook, 437 U.S. at 590.
Even when the claim elements are considered as a combination, they
add nothing that is not already present when the elements are considered
separately. Alice, 134 S. Ct. at 2359. Claim 1 conveys nothing more
meaningful than the fundamental concept of generating a second menu from
a first menu and sending the second menu to another location.
Upon review of Petitioner’s analysis and supporting evidence and
taking into account Patent Owner’s arguments, discussed below, we are
persuaded by Petitioner that independent claim 1 does not recite additional
elements that transform the claim into a patent-eligible application of an
abstract idea.
CBM2014-00013
Patent 6,982,733 B1

26
We are not persuaded by Patent Owner’s argument that the claims
require additional elements that transform the abstract idea into a patent-
eligible application (PO Resp. 44–74, 76–80) because it is based up on an
overly narrow construction of the claimed elements, as discussed in section
II(B) above, and is based on additional elements not recited or required by
the claims. Patent Owner argues the claims “supply a new and useful
application of the idea by virtue of the fact that they synchronously generate
and wirelessly transmit out non-PC standard handheld menus comprised of
multi-tiered levels of components.” Id. at 47.
Patent Owner’s argument is based upon its overly narrow construction
of the preamble of the claim and the claimed CPU and menu. As discussed
above in section II(B), when given the broadest reasonable construction in
light of the Specification, the claim elements do not require a central back-
office server that updates changes to the menu on multiple client devices and
vice versa and do not require menus that have multi-tiered levels of
components.
Patent Owner’s argument also is based upon elements not recited or
required by the claim. Patent Owner implies that the claims require that
second menu is transmitted “wirelessly” to the wireless handheld computing
device. E.g., see id. at 62. Although, the handheld computing device is
described as “wireless,” the claims do not recite that the second menu is
wirelessly transmitted to the handheld device, and do not preclude, for
example, transmitting the second menu to a PDA (i.e., a wireless handheld
computing device) via a wire and docking station, as described in the
Specification (Ex. 1033, col. 10, ll. 1–9). Patent Owner also implies that the
claims require that the application software functions to configure the
CBM2014-00013
Patent 6,982,733 B1

27
second menu so that it is in a non-PC standard graphical format (e.g., see id.
at 49, 61–67) for the wireless handheld computing device. However, no
such limitations appear in the claims. The claims are silent as to the format
of the second menu and contain no requirement that the second menu be in
such a format.
ii. Independent Claim 4
Independent claim 4 recites a CPU, a data storage device, and an
operating system with a GUI. The Specification states that “the present
invention uses typical hardware elements in the form of a computer
workstation, operating system and application software elements which
configure the hardware elements for operation in accordance with the
present invention.” Ex. 1033, col. 6, ll. 46–52. CPUs and data storage
devices are described as “typical hardware elements.” Id. at col. 6, ll. 48–49.
The Specification also discloses that the use of GUI operating systems, such
as Microsoft Windows® and Window CE® for handheld wireless device,
were known, and that GUIs were a known means for allowing a user to
manipulate data. Id. at col. 6, ll. 6–30. Given this, we determine that these
claim elements require nothing more than a generic computer with generic
computer elements performing generic computer functions. Merely reciting
a generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention. Alice, 134 S. Ct. at 2358. Using a graphical user
interface is a known way for a user to interact with the computer and does
not change the generic nature of the computer.
Independent claim 4 also recites a first menu stored on the data
storage device. The Specification discloses that the use of a data storage
device to store data is “typical.” See Ex. 1033, col. 6, ll. 52–56. Given this,
CBM2014-00013
Patent 6,982,733 B1

28
we determine that storing the menus on the data storage device is nothing
more than routine data gathering and does not transform the abstract idea
into a patent-eligible invention. See CyberSource, 654 F.3d at 1370.
The claim, further, recites application software that functions to
generate a second menu from a first menu by allowing for the selection of
items from the first menu, the addition of items to the second menu, and
assigning parameters to the items. The Specification discloses that GUIs
that display menus from which records can be created, deleted, modified, or
arranged are conventional. Ex. 1033, col. 6, ll. 6–32; col.7, ll. 4–23: see also
col. 12, ll. 62–65 (“the discrete programming steps are commonly known”).
To add significantly more to the abstract idea, additional features must be
more than well-understood, routine, conventional activity. Mayo, 132 S. Ct.
at 1298.
Claim 4 also recites that the application software functions to
synchronize the second menu between the data storage device and another
computing device. As discussed above in section II(B)(i), the Specification
discloses downloading a generated menu from a desktop PC to a connected
wireless handheld device. Ex. 1033, col. 10, ll. 1–6; see also id. at col. 3,
ll. 42–43, col. 6, ll. 33–36, col. 7, l. 26, col. 10, ll. 12–14. At the oral
hearing, Patent Owner indicated that downloading is synchronizing, as
“[i]t’s making something the same with something else.” See Tr. 28.
Further, the Specification discloses that Windows CE® includes “built in
synchronization between handheld devices, internet and desktop
infrastructure” (Ex. 1033, col. 12, ll. 15–18) and describes Windows CE® as
a common GUI operating system (id. at col. 6, ll. 20–24). Such
downloading or synchronizing is merely a conventional post-solution
CBM2014-00013
Patent 6,982,733 B1

29
activity. Conventional post-solution activity is not sufficient to transform
the abstract idea into patent-eligible subject matter. See Flook, 437 U.S. at
590–92.
As discussed above in section II(B)(iv), claim 4 also recites “second
menu is manually modified by handwriting or voice recording after
generation,” and we have construed this limitation as requiring the
application software to be capable of facilitating the generation of a second
menu that is capable of being changed by handwriting or voice recognition,
after generation, as a result of a user’s input or request. As discussed above
with regard to claim 1, this encompasses the second menu being manually
modified by being written upon by a user after generation and after being
printed. The Specification discloses that menus are commonly printed on
paper (Ex. 1033, col. 2, ll. 10–11) and that it is known to use pen and paper
in the hospitality industry to record orders (see id. at col. 1, ll. 27–35). See
Reply 11–12. This claim element is nothing more than insignificant post
solution activity and is not sufficient to transform the abstract idea into
patent-eligible subject matter. See Flook, 437 U.S. at 590.
Even when the claim elements are considered as a combination, they
add nothing that is not already present when the elements are considered
separately. Alice, 134 S. Ct. at 2359. Claim 4 conveys nothing more
meaningful than the fundamental concept of generating a second menu from
a first menu and sending the second menu to another location.
Upon review of Petitioner’s analysis and supporting evidence and
taking into account Patent Owner’s arguments, discussed below, we are
persuaded by Petitioner that independent claim 4 does not recite additional
CBM2014-00013
Patent 6,982,733 B1

30
elements that transform the claim into a patent-eligible application of an
abstract idea.
For the same reasons as discussed above with regard to claim 1, we
are not persuaded by Patent Owner’s argument that this claim requires
additional elements that transform the abstract idea into a patent-eligible
application (PO Resp. 44–74, 76–80). In addition, we are not persuaded by
Patent Owner’s argument because claim 4, unlike claim 1, does not recite
that the application software is for transmitting the second menu to a
wireless hand-held device or Web page. Claim 4 does not require a wireless
hand-held device or Webpage.
iii. Independent Claim 5
Independent claim 5 recites a microprocessor, a display device, an
input device, a data storage device, application software, and an operating
system with a GUI. The Specification states that “the present invention uses
typical hardware elements in the form of a computer workstation, operating
system and application software elements which configure the hardware
elements for operation in accordance with the present invention.” Ex. 1033,
col. 6, ll. 46–52. Microprocessors, display devices, data input device, and
data storage devices are described as “typical hardware elements.” Id. at
col. 5, ll. 53–59. The Specification also discloses that the use of GUI
operating systems, such as Microsoft Windows® and Window CE® for
handheld wireless device, were known, and that GUIs were a known means
for allowing a user to manipulate data. Id. at col. 6, ll. 6–30. Given this, we
determine that these claim elements require nothing more than a generic
computer with generic computer elements performing generic computer
functions. Merely reciting a generic computer cannot transform a patent-
CBM2014-00013
Patent 6,982,733 B1

31
ineligible abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at
2358. Using a graphical user interface, a known way for a user to interact
with the computer, does not change the generic nature of the computer.
Independent claim 5 also recites a master menu stored on the data
storage device. The Specification discloses that the use of a data storage
device to store data is “typical.” See Ex. 1033, col. 6, ll. 52–56. Given this,
we determine that storing the menus on the data storage device is nothing
more than routine data gathering and does not transform the abstract idea
into a patent-eligible invention. See CyberSource, 654 F.3d at 1370.
The claim recites that the microprocessor, operating system, and
application software function to display the master menu on the display
device in response to input from the input device and function to create the
modified menu from the master menu in response to input from the input
device. The Specification discloses that GUIs that display menus from
which records can be created, deleted, modified, or arranged are
conventional. Ex. 1033, col. 6, ll. 6–32, col.7, ll. 4–23: see also col. 12,
ll. 62–65 (“the discrete programming steps are commonly known”). To add
significantly more to the abstract idea, additional features must be more than
well-understood, routine, conventional activity. Mayo, 132 S. Ct. at 1298.
Claim 5 also recites that the system functions to synchronize the
modified menu between the data storage device and another computing
device. As discussed above in section II(B)(i), the Specification discloses
downloading a generated menu from a desktop PC to a connected wireless
handheld device. Ex. 1033, col. 10, ll. 1–6; see also id. at col. 3, ll. 42–43,
col. 6, ll. 33–36, col. 7, l. 26, col. 10, ll. 12–14. At the oral hearing, Patent
Owner indicated that downloading is synchronizing, as “[i]t’s making
CBM2014-00013
Patent 6,982,733 B1

32
something the same with something else.” See Tr. 28. Further, the
Specification discloses that Windows CE® includes “built in
synchronization between handheld devices, internet and desktop
infrastructure” (Ex. 1033, col. 12, ll. 15–18) and describes Windows CE® as
a common GUI operating system (id. at col. 6, ll. 20–24). Such
downloading or synchronizing is merely a conventional post-solution
activity. Conventional post-solution activity is not sufficient to transform
the abstract idea into patent-eligible subject matter. See Flook, 437 U.S. at
590–92.
As discussed above in section II(B)(iv), claim 5, like claim 1, recites
“wherein said modified menu is manually modified after generation.” As
discussed above with regard to claim 1, this encompasses the modified menu
being changed by being written upon by a user after generation and after
being printed. The Specification discloses that menus are commonly printed
on paper (Ex. 1033, col. 2, ll. 10–11) and that it is known to use pen and
paper in the hospitality industry (see id. at col. 1, ll. 27–35). See Reply 11–
12. This claim element is nothing more than insignificant post solution
activity and is not sufficient to transform the abstract idea into patent-
eligible subject matter. See Flook, 437 U.S. at 590.
Even when the claim elements are considered as a combination, they
add nothing that is not already present when the elements are considered
separately. Alice, 134 S. Ct. at 2359. Claim 5 conveys nothing more
meaningful than the fundamental concept of generating a second menu from
a first menu and sending the second menu to another location.
Upon review of Petitioner’s analysis and supporting evidence and
taking into account Patent Owner’s arguments, discussed below, we are
CBM2014-00013
Patent 6,982,733 B1

33
persuaded by Petitioner that independent claim 5 does not recite additional
elements that transforms the claim into a patent-eligible application of an
abstract idea.
For the same reasons as discussed above with regard to claim 1, we
are not persuaded by Patent Owner’s argument that this claim requires
additional elements that transform the abstract idea into a patent-eligible
application (PO Resp. 44–74, 76–80). In addition, we are not persuaded by
Patent Owner’s argument because claim 5, unlike claim 1, does not recite
that the application software is for transmitting the second menu to a
wireless hand-held device or Web page. Claim 5 does not require a wireless
hand-held device or Webpage. Further, unlike claims 1 and 4, claim 5 does
not require a CPU.
iv. Independent Claim 12
Independent claim 12 recites “a computer system having an input
device, a storage device, a video display, an operating system including a
graphical user interface and application software.” Claim 12 recites steps of
using these elements to display a first menu, a second menu, and a cursor in
windows of the video display and using the input device to select items from
the first menu and insert the item into a second menu. Claim 12 also recites
steps of adding additional items to the second menu and storing the second
menu on the storage device.
The Specification states that “the present invention uses typical
hardware elements in the form of a computer workstation, operating system
and application software elements which configure the hardware elements
for operation in accordance with the present invention.” Ex. 1033, col. 6, ll.
47–52; see also col. 12, ll. 62–65 (“the discrete programming steps are
CBM2014-00013
Patent 6,982,733 B1

34
commonly known”). CPUs and data storage devices are described as
“typical hardware elements.” Id. at col. 6, ll. 52–59. The Specification also
discloses that the use of GUI operating systems, such as Microsoft
Windows® and Window CE® for handheld wireless device, were known,
and that GUIs were a known means for allowing a user to manipulate data.
Id. at col. 6, ll. 6–30. The Specification further discloses that GUIs that
display menus from which records can be created, deleted, modified, or
arranged are conventional. Id. at col. 6, ll. 6–32, col.7, ll. 4–23; see also col.
12, ll. 62–65 (“the discrete programming steps are commonly known”).
Given this, we determine that these claim elements require nothing more
than a generic computer with generic computer elements performing generic
computer functions. Merely reciting a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention. Alice, 134 S.
Ct. at 2358. Using a graphical user interface is a known way for a user to
interact with the computer and does not change the generic nature of the
computer.
Claim 12 further recites a step of synchronizing the second menu
between the storage device and another data storage device that is connected
to a different computing device. As discussed above in section II(B)(i), the
Specification discloses downloading a generated menu from a desktop PC to
a connected wireless handheld device. Ex. 1033, col. 10, ll. 1–6; see also id.
at col. 3, ll. 42–43, col. 6, ll. 33–36, col. 7, l. 26, col. 10, ll. 12–14. At the
oral hearing, Patent Owner indicated that downloading is synchronizing, as
“[i]t’s making something the same with something else.” See Tr. 28.
Further, the Specification discloses that Windows CE® includes “built in
synchronization between handheld devices, internet and desktop
CBM2014-00013
Patent 6,982,733 B1

35
infrastructure” (Ex. 1033, col. 12, ll. 15–18) and describes Windows CE® as
a common GUI operating system (id. at col. 6, ll. 20–24). Such
downloading or synchronizing is merely a conventional post-solution
activity. Conventional post-solution activity is not sufficient to transform
the abstract idea into patent-eligible subject matter. See Flook, 437 U.S. at
590–92.
Claim 12 recites a step of manually modifying the second menu after
generation. As discussed above with regard to claims 1, 4, and 5, this
encompasses modifying the menu by a user writing changes on the menu
after it is generated and printed. The Specification discloses that menus are
commonly printed on paper (Ex. 1033, col. 2, ll. 10–11) and that it is known
to use pen and paper in the hospitality industry (see id. at col. 1, ll. 27–35).
See Reply 11–12. This claim element is nothing more than insignificant post
solution activity and is not sufficient to transform the abstract idea into
patent-eligible subject matter. See Flook, 437 U.S. at 590.
Even when the claim steps are considered as a combination, they add
nothing that is not already present when the steps are considered separately.
Alice, 134 S. Ct. at 2359. The claims convey nothing more meaningful than
the fundamental concept of generating a second menu from a first menu and
sending the second menu to another location.
Upon review of Petitioner’s analysis and supporting evidence and
taking into account Patent Owner’s arguments, discussed below, we are
persuaded by Petitioner that independent claim 12 does not recite additional
elements that transforms the claim into a patent-eligible application of an
abstract idea.
CBM2014-00013
Patent 6,982,733 B1

36
For the same reasons as discussed above with regard to claim 1, we
are not persuaded by Patent Owner’s argument that this claim requires
additional elements that transform the abstract idea into a patent-eligible
application (PO Resp. 44–74, 76–80). In addition, we are not persuaded by
Patent Owner’s argument because claim 12, unlike claim 1, does not recite
that the application software is for transmitting the second menu to a
wireless hand-held device or Web page. Claim 12 contains no requirement
for a wireless hand-held device or Webpage. Further, unlike claims 1 and 4,
claim 12 does not require a CPU.
iii. Dependent Claims 2 and 10
Claim 2 depends from claim 1 and recites “wherein the modified
second menu can be selectively printed on any printer directly from the
graphical user interface of a hand-held device.” Claim 10 depends from
claims 4 and 5 and recites a similar limitation. The Specification discloses
that menus are commonly printed on paper. Ex. 1033, col. 2, ll. 10–11.
These claim elements are nothing more than insignificant post solution
activity and are not sufficient to transform the abstract idea into patent-
eligible subject matter. See Flook, 437 U.S. at 590.
Upon review of Petitioner’s analysis and supporting evidence and
taking into account Patent Owner’s arguments, discussed below, we are
persuaded by Petitioner that dependent claims 2 and 10 do not recite
additional elements that transforms the claim into a patent-eligible
application of an abstract idea.
We are not persuaded by Patent Owner’s argument that the limitations
recited by these claims were unconventional or unique “in 2001 because the
very capability of selecting a printer from the GUI on a mobile device . . .
CBM2014-00013
Patent 6,982,733 B1

37
was novel then and unique to mobility and wireless handhelds” (PO Resp.
75). Patent Owner’s argument is based on an additional element not recited
or required by the claims. Claim 2 recites that the menu is capable of being
printed from a GUI of “a hand-held device” and claim 11 recites that the
menu is capable of being printed from a GUI of “said other computing
device.” Neither claim requires that the menu be capable of being printed
from the menu, itself, or from a mobile or wireless hand-held device.
iv. Dependent Claims 3 and 11
Claim 3 depends from claim 1 and recites “wherein the modified
second menu can be linked to a specific customer at a specific table directly
from the graphical user interface of a hand-held device.” Claim 11 depends
from claims 4 and 5 and recites a similar limitation. These claims require
that second menu has the claimed linking functionality. This is consistent
with the Specification, which discloses that the hand-held devices can link a
customer’s order from the menu to the specific customer’s position at a
table. Ex. 1033, col. 4, ll. 38–46.
Patent Owner argues that claims 3 and 11 recite limitations that were
unconventional or unique “in 2001 because the very capability of . . . linking
a particular order to a particular customer at a table was novel then and
unique to mobility and wireless handhelds” (PO Resp. 75) and argues that
Petitioner has not provided any evidence that establishes otherwise (id. at
75–76).
We are persuaded by Patent Owner’s argument. Petitioner states that
the claimed linking is a “classic example[] of manual tasks that cannot be
rendered patent-eligible merely by performing them with a computer.”
Reply 15. However, Petitioner fails to provide sufficient evidence to support
CBM2014-00013
Patent 6,982,733 B1

38
its statement. See Pet. 49–66; Reply 9–15. Petitioner provides insufficient
evidence to establish that a menu having the functionality to perform the
claimed linking from a GUI on a hand-held device, was well-known or
conventional and merely require a general purpose computer. See id. Upon
review, we determine that Petitioner fails to establish by a preponderance of
the evidence that claims 3 and 11 recite patent-ineligible subject matter.
v. Dependent Claims 6 –9 and 13–16
Claim 6 depends from claims 1, 4, or 5 and recites “wherein the
manual modification involves handwriting capture.” Claim 7 depends from
claim 6 and further recites that “the handwriting capture involves
handwriting recognition and conversion to text.” Claim 8 depends from
claims 1, 4, or 5 and recites “wherein the manual modification involves
voice capture.” Claim 9 depends from claim 8 and further recites that “the
voice capture involves voice recognition and conversion to text.” Claims
13–16 depend from claim 12 and recite similar limitations. These claims
require that the menus have handwriting capture or voice capture
functionality. This is consistent with the Specification, which discloses
using handwritten screen captures and voice recorded message captures to
couple additional information to the fixed menu information before sending
it to a point of sale system, printer, or display. See Ex. 1033, col. 3, l. 48–
col. 4, l. 37; Fig. 8.
Patent Owner argues that these dependent claims recite a particular
kind of manual modification that transforms these claims into patent eligible
subject matter and argues that Petitioner ignored this in the Petition. PO
Resp. 75–76; see id. at 53–54, 56, 69.
CBM2014-00013
Patent 6,982,733 B1

39
We are persuaded by Patent Owner argument. Petitioner argues that
“‘[m]anual modification’ of a menu is a classic example of a manual task
that can be performed with a pen and paper, which cannot be rendered
patent-eligible merely by performing it with a computer.” Reply 11 (citation
omitted). Petitioner, further, argues that none of the claims of the ’733
patent are directed to any specific software for accomplishing manual
modification. Id. Petitioner, however, does not specifically address these
dependent claims, which require the menu to have functionality to perform
handwriting capture or voice capture. See Pet. 49–66; Reply 9–15. Further,
Petitioner fails to provide sufficient evidence that menus having handwriting
capture or voice capture functionality were well-known or conventional at
the time of the ’733 patent or require merely a general purpose computer.
See id.
Upon review of the Petitioner’s evidence and analysis, we determine
that Petitioner fails to establish by a preponderance of the evidence that
claims 6–9 and 13–16 recite patent-ineligible subject matter.

III. CONCLUSION
We conclude Petitioner has proven, by a preponderance of the
evidence, that claims 1, 2, 4, 5, 10, and 12 of the ’733 patent are
unpatentable under 35 U.S.C. § 101.
We conclude Petitioner has not proven, by a preponderance of the
evidence, that claims 3, 6–9, 11, and 13–16 of the ’733 patent are
unpatentable under 35 U.S.C. § 101.
CBM2014-00013
Patent 6,982,733 B1

40
This is a final written decision of the Board under 35 U.S.C. § 328(a).
Parties to the proceeding seeking judicial review of this decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IV. ORDER
Accordingly, it is hereby:
ORDERED that claims 1, 2, 4, 5, 10, and 12 of U.S. Patent No.
6,982,733 B1 are held unpatentable.
CBM2014-00013
Patent 6,982,733 B1

41
FOR PETITIONER:
Richard Zembeck
Gilbert Greene
richard.zembeck@nortonrosefullbright.com
bert.greene@nortonrosefullbright.com

FOR PATENT OWNER:

John Osborne
Michael Fabiano
josborne@osborneipl.com
mdfabiano@fabianolawfirm.com