IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of: Michael Tasler
`
`Group No.2 2181
`
`Serial No.:
`
`l 1/467,073
`
`Conf. No.: 3012
`
`Filed:
`
`August 24, 2006
`
`Examiner: Harold J. Kim
`
`For:
`
`ANALOG DATA GENERATING AND
`PROCESSING DEVICE FOR USE WITH
`A PERSONAL COMPUTER
`
`(As Amended)
`
`Attomey
`Docket No.:
`
`0757/97866
`
`SUPPLEMENTAL PRELIMINARY AMENDMENT
`
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, Virginia 22313-0001
`
`Dear Sir:
`
`Please enter this supplemental preliminary amendment prior to examination of the above-
`
`captioned application.
`
`Papst Licensing GmbH & Co. KG - Exhibit 2009, p. 1
`
`

`
`Applicant: Michael Tasler
`Application No.: 1 l/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page ~ 2 —
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`IN THE CLAIMS:
`
`Please cancel claims 17-3 9, and add new claims 40-84 as noted hereinafter:
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`1-39.
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`(cancelled).
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`40.
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`(new) An analog data generating and processing device for use with a personal
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`computer having at least one multi—puipose interface to which inquiry signals are periodically
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`sent as to what type of device is operatively connected thereto, the analog data generating and
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`processing device comprising:
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`an input/output port that is to be operatively connected to the inulti—purpose
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`interface of the personal computer;
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`a sensor that is mounted within a housing, the sensor being adapted to receive
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`analog wave signals from a source that is external to the housing and that is not located in
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`substantial proximity to the sensor, the sensor being further adapted to generate sets of analog
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`data from the analog wave signals that it receives;
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`an analog to digital converter that is operatively connected to the sensor and that
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`generates a set of digitized analog data from each set of analog data;
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`a circuit that includes a processor and a first memory that are operatively
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`connected to the analog to digital converter, a first set of instructions being stored in the first
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`memory that are utilized by the processor to cause the sets of digitized analog data to be stored in
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`the first memory irrespective of whether or not the analog data generating and processing device
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`has been recognized by the personal computer;
`
`Papst Licensing GmbH & Co. KG - Exhibit 2009, p. 2
`
`

`
`Applicant: Michael Tasler
`Application No.: l 1/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page —~ 3 ~
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`the first set of instructions being further adapted to cause the sets of digitized
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`analog data to be stored in the first memory before the input/output port is connected to a multi-
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`purpose interface of the personal computer;
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`a second set of instructions being stored in the first memory that are utilized by
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`the processor to cause a response signal to be automatically and without user intervention sent
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`from the input/output port to the multi—purpose interface after they have been operatively
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`connected together and after an inquiry signal has been received by the input/output port, the
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`response signal containing information that, when received and processed by a personal
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`computer, allows the personal computer to automatically and without user intervention recognize
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`the analog data generating and processing device as being a device having digital data that is
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`stored therein;
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`a third set of instructions being stored in the first memory that are utilized by the
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`processor, after the analog data generating and processing device has been automatically
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`recognized by the personal computer, and while the input/output port is operatively connected to
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`the multi—purpose interface, to cause user selected ones of the digitized sets of analog data,
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`including any digitized data sets that are generated before the input/output port is connected to
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`the multi—purpose interface of the personal computer, to be transferred from the first memory,
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`through the input/output port, through the multi—purpose interface, and to the personal computer;
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`and
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`the third set of instructions being further adapted to cause the user selected
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`digitized data sets to be transferred to the personal computer, after the input/output port has been
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`connected to the multi—purpose interface of the personal computer and after the analog data
`
`Papst Licensing GmbH & Co. KG - Exhibit 2009, p. 3
`
`

`
`Applicant: Michael Tasler
`Application No.: 11/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page — 4 —
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`generating and processing device has been recognized by the personal computer, by means of a
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`software driver that is stored in a second memory of the personal computer without user
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`intervention.
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`41.
`
`(new) A combination comprising the analog data generating and processing
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`device of claim 40 and a personal computer.
`
`42.
`
`(new) The analog data generating and processing device of claim 40, wherein the
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`analog wave signals comprise electromagnetic radiation.
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`43.
`
`(new) The analog data generating and processing device of claim 40, wherein the
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`sensor is adapted to have two—way communication with the personal computer.
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`44.
`
`(new) The analog data generating and processing device of claim 40, wherein the
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`analog wave signals are generated by a medical device.
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`45.
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`(new) The analog data generating and processing device of claim 40, wherein the
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`processor, first memory and circuit form a flexible interface.
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`46.
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`(new) The analog data generating and processing device ofclaim 40, wherein the
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`processor, first memory and circuit form a universal interface.
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`47.
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`The analog data generating and processing device of claim 40, wherein the sensor
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`comprises an electronic measuring device.
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`48.
`
`(new) The analog data generating and processing device of claim 40, wherein the
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`sensor is electrically connected to the processor and the first memory by a two—way
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`communication line.
`
`Papst Licensing GmbH & Co. KG - Exhibit 2009, p. 4
`
`

`
`Applicant: Michael Tasler
`Application No.: l 1/467,073
`Filed: August 24, 2006
`Date: July l7, 2007
`Page — 5 —
`
`49.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`response signal is adapted to inform a personal computer that the analog data generating and
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`processing device is a mass storage device.
`
`50.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`response signal is adapted to inform the personal computer that the analog data generating and
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`processing device is a hard disk drive.
`
`51.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`response signal is adapted to lie to the personal computer about the true nature of the analog data
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`generating and processing device.
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`52.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`software driver is located in a BIOS of the personal computer.
`
`53.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`analog to digital converter receives power when the digitized sets of analog data are being
`
`transferred to the personal computer.
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`54.
`
`(new) The analog data generating and processing device of claim 40, wherein the
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`sensor receives power when the digitized sets of analog data are being transferred to the personal
`
`computer.
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`54.
`
`(new) The analog data generating and processing device of claim 40, wherein
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`receipt and processing of the response signal by the personal computer allows it to communicate
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`with the analog data generating and processing device as if it were a mass storage device even
`
`though it is not a mass storage device.
`
`Papst Licensing GmbH & Co. KG - Exhibit 2009, p. 5
`
`

`
`Applicant: Michael Tasler
`Application No; 11/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page — 6 ~
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`55.
`
`(new) The analog data generating and processing device of claim 40) wherein the
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`first memory of the analog data generating and processing device compiises a buffer memory.
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`56.
`
`(new) The analog data generating and processing device of claim 40, wherein the
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`input/output port is adapted to be connected to a SCSI interface of the personal computer.
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`5 7.
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`(new) The analog data generating and processing device of claim 40, wherein the
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`processor comprises a digital signal processor.
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`58.
`
`(new) The analog data generating and processing device of claim 40, wherein the
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`sets of digitized analog data are transferred to the personal computer in a format suitable for a
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`mass storage device present in the personal computer.
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`59.
`
`(new) The analog data generating and processing device of claim 40, wherein a
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`root directory is created in the first memory which can be accessed by the personal computer.
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`60.
`
`(new) The analog data generating and processing device of claim 40, wherein a
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`configuration file is stored in the first memory.
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`61.
`
`(new) The analog data generating and processing device of claim 40, wherein a
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`configuration file is stored in the first memory that allows a user to configure the analog data
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`generating and processing device as being a specific mass storage device.
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`62.
`
`(new) The analog data generating and processing device of claim 40, wherein a
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`configuration file is stored in the first memory that allows a user to configure the analog data
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`generating and processing device as being a specific hard disk drive.
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`63.
`
`(new) The analog data generating and processing device of claim 40, wherein a
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`wire based connection is used to connect the input/output port to the multi—purpose interface of
`
`the personal computer.
`
`Papst Licensing GmbH & Co. KG - Exhibit 2009, p. 6
`
`

`
`Applicant: Michael Tasler
`Application No.: 11/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page ~ 7 -
`
`64.
`
`(new) The analog data generating and processing device of claim 40, wherein the
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`sensor is detachably coupled to the analog to digital converter.
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`65.
`
`(new) The analog data generating and processing device of claim 40, wherein the
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`sensor is adapted to receive data from the personal computer.
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`66.
`
`(new) The analog data generating and processing device of claim 40, wherein the
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`sensor is not directly involved in the generation of the response signal.
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`67.
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`(new) An analog data generating and processing device (ADGPD), comprising:
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`a circuit that is adapted to be operatively coupled to a multi-purpose user interface
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`(MPUI) of a personal computer (PC) to which the PC periodically sends device identification
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`signals and to which the PC is capable of sending data transfer requests;
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`a first set of instructions stored in an ADGPD memory that are adapted to cause
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`analog data to be generated from one or more analog wave signals from a source that is both
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`external to and not located in substantial proximity to the ADGPD, the first set of instructions
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`being further adapted to cause digitized analog data that is representative of the analog data to be
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`stored in the ADGPD memory;
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`the first set of instructions being further adapted to cause the sets of digitized
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`analog data to be stored in the ADGPD memory before the circuit is connected to a multi-
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`purpose interface of the PC;
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`a second set of instructions stored in the ADGPD memory that is adapted to
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`cause, alter a device identification signal has been received and processed, a response signal to
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`be automatically and without user intervention sent to the PC that contains data which indicates
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`to the PC how the PC can communicate with and receive data from the ADPGD;
`
`Papst Licensing GmbH & Co. KG - Exhibit 2009, p. 7
`
`

`
`Applicant: Michael Tasler
`Application No.: 11/467,073
`Filed: August 24, 2006
`Date: July l7, 2007
`Page — 8 —
`
`a third set of instructions stored in the ADGPD memory that are adapted to cause,
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`after a data transfer request has been received and processed, a transfer of at least some of the
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`digitized analog data, including any digitized data sets that are generated before the circuit is
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`coupled to the multi—purpose interface of the PC, from the ADGPD memory to the PC; and
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`the third set of instructions being further adapted to affect the transfer of user
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`selected digitized data sets by means of a software driver that is stored in a memory of the PC
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`without user intervention.
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`68.
`
`(new) A combination comprising the analog data generating and processing
`
`device of claim 67 and a personal computer.
`
`69.
`
`(new) The ADGPD of claim 67, wherein the analog wave signals comprise
`
`electromagnetic radiation.
`
`70.
`
`(new) The ADGPD of claim 67, wherein the circuit includes a sensor that is
`
`adapted to have two—way communication with the PC.
`
`71.
`
`(new) The ADGPD of claim 67, wherein the analog wave signals are generated
`
`by a medical device.
`
`72.
`
`(new) The ADGPD of claim 67, wherein the circuit forms a flexible interface.
`
`73.
`
`(new) The ADGPD of claim 67, wherein the circuit forms a universal interface.
`
`74.
`
`(new) The ADGPD ofclaim 67, wherein the digitized analog data is stored in the
`
`ADGPD memory only after the analog data generating and transmitting device is operatively
`
`connected to the PC.
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`75.
`
`(new) The ADGPD of claim 67, wherein the response signal is adapted to inform
`
`a PC that the ADGPD is a mass storage device.
`
`Papst Licensing GmbH & Co. KG - Exhibit 2009, p. 8
`
`

`
`Applicant: Michael Tasler
`Application No.: 11/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page — 9 -
`
`76.
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`(new) The ADGPD of claim 67, wherein the response signal is adapted to inform
`
`the PC that the ADGPD is a hard disk drive.
`
`77.
`
`(new) The ADGPD of claim 67, wherein the response signal is adapted to lie to
`
`the PC about the true nature of the ADGPD.
`
`78.
`
`(new) The ADGPD of claim 67, wherein the software driver is located in a BIOS
`
`of the PC.
`
`79.
`
`(new) The ADGPD of claim 67, wherein the entirety of the circuit receives
`
`power when the digitized analog data is being transferred to the PC.
`
`80.
`
`(new) The ADGPD of claim 67, wherein the circuit includes a SCSI interface
`
`that is adapted to be connected to the MPUI.
`
`81.
`
`(new) The ADGPD of claim 67, wherein a wire based connection is used to
`
`connect the circuit to the MPUI.
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`82.
`
`(new) The ADGPD of claim 67, wherein the circuit includes a sensor for
`
`generating analog data, the sensor being detachably coupled to a remaining portion of the circuit.
`
`83.
`
`(new) The ADGPD of claim 67, wherein the circuit includes a sensor that is
`
`adapted to receive data from the PC.
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`84.
`
`(new) The ADGPD of claim 67, wherein the circuit includes a sensor that is not
`
`directly involved in the generation of the response signal.
`
`Papst Licensing GmbH & Co. KG - Exhibit 2009, p. 9
`
`

`
`Applicant: Michael Tasler
`Application No.: 11/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page — 10 —
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`REMARKS
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`Claims 1-39 have been cancelled, and new claims 401 11 are being submitted herewith
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`for the Examiner's consideration. The new claims have been submitted to more clearly claim the
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`applicant’s invention, and to better highlight how the claims distinguish over all the prior art of
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`record in this and the parent application, either taken alone or in any purported combination.
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`In the parent of this application, the undersigned attorney submitted information about
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`various digital cameras and software provided by Eastman Kodak, Sony, Polaroid, Canon,
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`Olympus, and Casio, and asked the Examiner to assume that this information is prior art.
`
`Assuming that it is prior art, this infonnation, together with the other camera related patents are
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`of record in the parent application, evidences that it was the accepted state of the art in the digital
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`camera field around the time of the claimed invention to require a user to load applications
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`software onto a computer before image data could be transferred to the computer from a digital
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`camera. The scanner related references (e.g., USP 5,508,821) also require user intervention of
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`some sort to allow scanned images to be transferred over to a personal computer.
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`Deviations away from the accepted state ofthe art are evidence ofpatentability of an
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`invention. Sec, W.L. Gore &Associates, Inc. v. Garlock, Inc, 721 F.2d 1540,
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`1552 (C.A.Fed.l983) (The fact that “Dr. Gore .
`
`.
`
`. proceeded contrary to the accepted wisdom of
`
`the prior art .
`
`.
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`. is strong evidence of HOH0l)\/l()uS11CSS.”). See also, Tec Air, Inc. v. Demo Mfg.
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`Mich, Inc, 192 F.3d 1353, 1360 (Fed. Cir. 1999) (“To rebut a prima facie case of obviousness
`
`based on prior art, objective evidence of nonobviousness may be used, including whether the
`
`invention was contrary to accepted wisdom of the prior artf’). The recent Supreme Court
`
`Papst Licensing GmbH & Co. KG - Exhibit 2009, p. 10
`
`

`
`Applicant: Michael Tasler
`
`Application No.: ll/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page ~ ll -
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`decision in the KSR case does not overrule and is not inconsistent with the above—noted Gore or
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`Tec Air decisions of the Federal Circuit.
`
`All of the currently pending claims require an amomatic and without user intervention
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`feature that allows a computer to understand how to talk to and receive data from the claimed
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`device without a user having to, for example, load applications software onto a computer before
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`being able to transfer data to it.
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`It is respectfully submitted that, in accordance with the above-
`
`referenced case law, all currently pending claims should be found to be patentable. One reason
`
`for this is that the present invention deviates away fiem the accepted state of the art evidenced by
`
`the camera, software and scanner references of record, which affirmatively require user
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`intervention — a user must, for example, load applications sofiware onto a computer to be able to
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`transfer pictures to it from a digital camera.
`
`The currently pending claims should be found to be patentable for a number of additional
`
`reasons. For example, the new claims further specify that the claimed device is capable of
`
`generating digitized analog data sets before the claimed device is connected to a personal
`
`computer. The undersigned attorney is not aware of any proper combination of references that
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`teaches or suggests this claim element.
`
`As one example, and assuming for the sake of argument that a “plug and play keyboard”
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`is prior art and that it is proper to combine such assumed prior art with a camera reference such
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`as US Patent No. 5,470,335, such a purported combination of references would not render
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`obvious the subject matter of the currently pending claims. One reason for this is that all claims
`
`require the capability of generating digitized analog data before the claimed device is connected
`
`to a personal computer.
`
`In direct contrast to this, keyboards create useful data only after they are
`
`Papst Licensing GmbH & Co. KG - Exhibit 2009, p. 11
`
`

`
`Applicant: Michael Tasler
`Application No.: l l/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page —— 12 —
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`connected to a personal computer and, therefore, the combination of the keyboard with the ‘335
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`patent would be able to create useful data on a plug and play basis only after the combination is
`
`connected to a personal computer. For this additional reason, for example, it is respectfully
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`submitted that all currently pending claims should be found to be patentable.
`
`The Examiner’s attention is drawn to the fact that each independent claim includes a
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`dependent claim that recites a combination of a personal computer with the device claimed in the
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`corresponding independent claim.
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`It is the specific intention of the client and the undersigned
`
`attorney to ensure that all currently pending claims are first directly infringed by the manufacture
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`or sale of the claimed device, not by the combination of the claimed device and a personal
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`computer.
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`As a follow-up to the previously filed notice of litigation, additional lawsuits involving
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`Fujifilm, Samsung, Olympus, MEI and JVC have been filed with respect to the same patents at
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`issue in the previous notice. A multi—district litigation may be declared in the future.
`
`The undersigned attorney requests the Examiner to review all the prior art submitted in
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`connection with this and the parent application, and to base his decision on the patentability of
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`the currently pending claims only on the remarks made in this paper, not on arguments or
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`amendments made in any other paper or any application ofwhich this application claims priority.
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`It is the specific intention of the applicant that the independent claims noted above should
`
`be interpreted to stand on their own.
`
`In this regard, the limitations of the claims depending from
`
`any dependent claim should not be read into any independent claim for any reason.
`
`Papst Licensing GmbH & Co. KG - Exhibit 2009, p. 12
`
`

`
`Applicant: Michael Tasler
`Application No.: ll/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page -— l3 -
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`lt is respectfully submitted that the new claims are in condition for allowance and,
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`therefore, a formal notice to that effect is earnestly solicited.
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`In this regard, the Examiner is
`
`respectfully requested to Contact the undersigned attorney upon entry of this amendment.
`
` ysubrni ed,
`
`. Salmon
`y
`e
`Attorney for Applicant
`Registration No. 37,435
`
`July 17, 2007
`Welsh & Katz, Ltd.
`120 South Riverside Plaza, 22nd Floor
`Chicago, IL 60606
`Telephone (312) 655-1500
`Facsimile (312) 655-1501
`E—mail jwsalmongwwelshkatz.corn
`
`Papst Licensing GmbH & Co. KG - Exhibit 2009, p. 13