UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.goV
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`APPLICATION NO.
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`F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`12/891,443
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`09/27/2010
`
`Michael Tasler
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`0757- 1 13 189
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`1408
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`11/28/2012
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`24628
`7590
`Husch Blackwell LLP
`Husch Blackwell Sanders LLP Welsh & Katz
`120 S RIVERSIDE PLAZA
`22ND FLOOR
`CHICAGO, IL 60606
`
`LEE, CHUN KUAN
`
`2181
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`MAIL DATE
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`11/28/2012
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`PAPER NUMBER
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`DELIVERY MODE
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`PAPER
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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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`PTOL—90A (Rev. 04/07)
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`Olympus et al. 1121
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`Office Action Summary
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`Application No.
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`App|icant(s)
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`12/891,443
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`Examiner
`Chun—Kuan Lee
`
`TASLER, MICHAEL
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`Art Unit
`2181
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1.136(a).
`In no event, however, may a reply be timely filed
`after SIX (6) 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).
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`Status
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`1)|Xl Responsive to communication(s) filed on 29 October 2012.
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`2a)I:I This action is FINAL.
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`2b)IXI This action is non—final.
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`3)|:l 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)|:l 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 Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)|XI Claim(s) 2-:.3‘6 is/are pending in the application.
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`5a) Of the above claim(s) 14 1723-26 28 29 and 33 is/are withdrawn from consideration.
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`6)I:I Claim(s) j is/are allowed.
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`7)|Xl Claim(s 2-13 15 16 18-22 24 27 30-32 35 and 36 is/are rejected.
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`8)I:I Claim(s) _ is/are objected to.
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`9)|:l Claim(s) _ are subject to restriction and/or election requirement.
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`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway
`program at a participating intellectual property office for the corresponding application. For more information, please see
`httn://www.usntq.ciov/patents./init events/'
`h/'iPdex.'s or send an inquiry to P:-7’Hfeedback
`us to.cov.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
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`11)|Xl The drawing(s) filed on 27 Segtember 2010 is/are: a)lZl accepted or b)|:I objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`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)|Xl Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
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`a)IZl All
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`b)I:I Some * c)I:l None of:
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`1.I:I Certified copies of the priority documents have been received.
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`2.I:I Certified copies of the priority documents have been received in Application No. j.
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`3.I:I 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)).
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`* 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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`1) El Notice of References Cited (PTO-892)
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`2) D Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date
`.
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`3) El Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`4) D Other:
`.
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`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 09-12)
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`Office Action Summary
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`6 KITIIWUS e a _
`Part of Paper o./
`ail Date 201211§7
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`Application/Control Number: 12/891,443
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`Page 2
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`Art Unit: 2181
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`DETAILED ACTION
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`CONTINUED EXAMINATION UNDER 37 CFR 1.114
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`1.
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`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
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`10/29/2012 has been entered.
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`RESPONSE TO ARGUMENTS
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`2.
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`Applicant's arguments filed 10/29/2012 have been fully considered but they are
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`not persuasive.
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`3.
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`In response to applicant’s reiteration with regard to the telephone interview
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`conducted such that Applicant respectfully disagrees with the summary of the interview
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`particularly the attempt to reduce the claims to the "inventive concept". Applicant did not
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`and does not agree with recharaterizing the claims to an inventive concept of the
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`summary's indications of invention concepts. It is Applicant's position that the claims as
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`they are set out define the invention, and that it is these claims which should be
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`examined. Thus, Applicant respectfully requests that each claim of this application be
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`examined as written and as a whole.
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`Application/Control Number: 12/891,443
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`Page 3
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`Art Unit: 2181
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`As indicated in the interview summary,
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`the inventive concept for the instant
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`application is the claims
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`and the explanation with regard to the function of the
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`inventive concept in the interview summary is a clear exemplary interpretation regarding
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`on how the claims can be envisioned; therefore, the examiner is examining each claims
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`as written and as a whole based on the examiner’s best understanding on how the
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`claims can be interpreted. If the interpretation is erroneous in any way, the examiner
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`welcomes the applicant's clarification in the subsequent response, as the applicant
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`currently do not offer how the examiner's interpretation of the claims are inaccurate and
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`what is the correct interpretation of the claims.
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`Additionally, the examiner clearly understood that the summary for the inventive
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`concept regarding to claims of another application (11/467,092) is relevant to the instant
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`application as the examiner did inquire as to how this application differ from the
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`copending application 11/467,092, wherein the applicant indicted that the claims for the
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`instant application are broader as the independent claims for the instant do not require
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`the multiple parallel channels and that the instant application is basically the same
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`concept as the copending application 11/467,092. Furthermore, this was part of the
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`examiner’s rational for the double patenting rejection between the instant application
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`and the copending application 11/467,092.
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`4.
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`In response to applicant’s plurality of arguments with regard to the independent
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`claims 2, 32 and 35 rejected under 35 U.S.C. 103(a) that the resulting combination of
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`Application/Control Number: 12/891,443
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`the references does not teach/suggest applicant’s inventive concept because of the
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`following:
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`— Hashimoto does not describe execution of an instruction set to establish
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`communication with the host computer as claimed because Hashimoto merely
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`describes a process for detection by the camera of an active connection by
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`monitoring for a signal from the interface, and not the process claimed which is
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`a process in which the analog device processor executes instructions to cause
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`a class identifying parameter (mis-indicative of the class of the device) to be
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`sent to the host computer (i.e. automatically sends mis—identifying information
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`to the host computer);
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`— there is no description anywhere in Hashimoto of the claimed process of
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`executing a set of instructions that sends a class identifying parameter to the
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`host computer;
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`— at the time of the Hashimoto disclosure, the user would load software and input
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`information into the host computer to identify the camera and there was no
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`requirement for the camera CPU to be involved in a process to identify itself to
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`the host computer;
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`— neither Hashimoto nor any of the other cited references disclose a processor in
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`the peripheral device involved in automatically sending a mis—identifying class
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`parameter/information to the host computer because host computer in Smith’s
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`Plug and Play functionality assigns an identifying number rather than the
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`peripheral processor automatically sending identification information; therefore
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`Page 5
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`J do not disclose automatic sending of identification (i.e. a host computer
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`resource allocation process concerned with allocation of the resources of the
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`host computer to avoid conflicts between resources within the host and not
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`device recognition process), % does not mention of identification
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`information being read or sent and J does not even mention a peripheral
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`processor automatically providing identification information to the host
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`computer
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`— J also does not describe a peripheral having a processor involved in the
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`Plug and Play process;
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`— the Plug and Play functionality of Smith is functionality which is primarily located
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`in the host computer not the peripheral. The Plug and Play compatibility as
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`implemented in the peripheral in g is merely a set of logic gates and
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`registers (not a processor) to give the peripheral compatibility with the Plug and
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`Play functionality of the host computer. Plug and Play functionality calls for the
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`host computer to configure its resources according to the needs of all the
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`peripherals attached to it and thus primarily concerns software or firmware
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`supplied functions located in the host computer. Thus, it would not make sense
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`to one skilled in the art to put these Plug and Play functions into the peripheral
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`device which would have no use for them. The peripheral device is only going
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`to connect to a host computer and thus does not need to allocate its resources
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`to handle multiple Plug and Play devices;
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`— J expressly teaches the contrary, that a device driver must be loaded once
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`the peripherals have been set up and host computer resources assigned (see
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`e.g., Smith, Fig. 2, ref. 126 and Col. 4 lines 32-33);
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`— Ristelhueber do not describes a peripheral device whereby there is no
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`requirement for any user-loaded file transfer software to be loaded on the
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`computer in addition to the operating system because Ristelhueber is a non-
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`technical buyer magazine article which generically describes a future Plug and
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`Play standard with an enthusiastic description of the future (''In about a year the
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`key standard and specifications will be in place to make PnP a reality", p. 1,
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`paragraph 3); thus, Ristelhueber is not enabling prior art; Ristelhueber is not
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`describing recognizing what peripheral is attached, only whether there is a
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`peripheral attached to the port; further, there is no enabling disclosure of how
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`such recognition would one day be implemented; the description in
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`Ristelhueber is just an over enthusiastic prediction of the hoped for goals for
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`PnP, which is to detect when a new device is attached (i.e. identifying presence
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`not what it is), configure the host computer resources to accommodate it, and
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`then activate the device; however, Ristelhueber nowhere discusses or even
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`mentions device drivers, or what will happen after a device is configured and
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`activated. The J reference and the PnP Standards Specification make
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`clear that a device driver is still needed after the peripheral has been detected,
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`assigned resources and activated in accordance with Plug and Play;
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`furthermore, there is no teaching in Ristelhueber to relieve the user from having
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`to load a device driver, there is no mention of a processor on the peripheral,
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`and there is no mention of the need or lack of need for user loaded software on
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`the host computer;
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`— the environment and functionality, and the problems to be resolved in
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`Shinohara are completely different to Hashimoto; therefore, it would not be
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`obvious to combine the Shinohara's flash disk drive features with Hashimoto
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`because of these fundamental differences; Shinohara does not teach or even
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`mention that there is no need for user interaction to set up a file system, or that
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`the device is not identified as an analog data generating and processing device
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`and is identified instead as a digital mass storage device; Shinohara is merely a
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`mass storage device acting as a mass storage device; further, the data
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`structure set up would require software on the host computer to perform these
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`set-up functions; thus, additional software must be added to the host computer
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`to set up the data structure for the flash drive; further, since Shinohara is
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`merely a hard disk emulator connected to a computer, it cannot cause an
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`acquired file of digitized analog data acquired from a analog source to be
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`transferred (i.e., there is only digital data stored by the host computer); and the
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`teaching of Shinohara does not suggest to one of ordinary skill in the art the
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`operation and identification of an analog data acquisition device as an entirely
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`different type of device, i.e. a mass storage device, and does not suggest a
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`device which sends an identifying parameter to the host computer identifying
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`the device as a device of dramatically different type than what it actually is;
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`— Shinohara merely describes an approach to extending the life of the flash
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`memory in a flash disk drive, and there is no mention of device drivers or no
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`mention of not needing to load file transfer enabling software by Shinohara;
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`nowhere in Shinohara is there any mention of transferring a file of digitized
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`analog data (Shinohara is a disk driver, as such, it cannot acquire and digitize
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`analog data and therefore cannot transfer it), or any data, without requiring any
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`user loaded file transfer enabling software; rather, the detailed description cited
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`calls for the host computer to perform unique file management functions (Col.
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`4, lines 34-49) which would require data transfer software in the host computer
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`to set up the disk emulation; further, there is no teaching or mention of the
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`disclosed disk emulator being able to transfer data without data—transfer
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`software loaded on the host computer; thus, Shinohara does not teach the
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`feature of transferring digitized analog data without requiring any user loaded
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`file transfer enabling software; the Office Action also asserts that combining the
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`flash memory device of Shinohara with the Plug and Play functionality of the
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`other references such as J, teaches this feature; however, as discussed
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`above, Plug and Play is concerned with allocation of the resources of the host
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`computer to avoid conflicts between resources within the host computer; the
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`Plug and Play process thus does not eliminate the need to supply a driver but
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`rather calls for loading the driver after the system resources are allocated and
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`the devices activated; the Plug and Play standard does not address device
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`drivers other than the fact that one is needed. (Plug and Play Specification p. 1
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