APPLICATION NO,
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO,
`
`CONFIRMATION NO,
`
`091331,,002
`
`06/14/1999
`
`MICHAEL T ASLER
`
`20551101
`
`1117
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United. States Patent and Trademark Offico
`Addrel;l.s: COMMIssIONER OF PATENTS AND TRADEMARKS
`Washington. D.C 20231
`www. uSJlto.~ov
`
`12118/2001
`
`7590
`24283
`PATTON BOGGS
`PO BOX 270930
`LOUISVILLE, CO 80027
`
`EXAMINER
`
`DU,THUANN
`
`ART UNIT
`
`PAPER NUMBER
`
`2182
`
`DATE MAILED: 12/18/2001
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev, 07-01)
`
`, //
`"'/?-
`
`PAPM DL00000430
`
`Papst Licensing GmbH & Co. KG - Exhibit 2005, p. 1
`
`

`

`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`09/331,002
`
`Examiner
`
`TASLER, MICHAEL
`
`Art Unit
`
`-
`
`I
`2182
`Thuan N. Du
`__ The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTH(S) FROM
`THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however. maya reply be limely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`_ If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
`_ 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 elClended 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).
`status
`1 )[81 Responsive to communication(s) filed on 14 June 1999.
`This action is FINAL.
`2b)[8I This action is non-final.
`
`2a)0
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 CoD. 11, 453 O.G. 213.
`
`Disposition of Claims
`4)[81 Claim(s) 1-16 is/are pending in the application.
`
`4a) Of the above claim(s) __ is/are withdrawn from consideration.
`
`5)0 Claim(s) __ is/are allowed.
`
`6)[81 Claim(s) 1-16 is/are rejected.
`
`7)0 Claim(s) __ is/are objected to.
`
`8)0 Claim(s) __ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)0 The specification is objected to by the Examiner.
`
`10)0 The drawing(s) filed on __ is/are: a)O accepted or b)O objected to by the Examiner,
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`11)0 The proposed drawing correction filed on __ is: a)O approved b)O disapproved by the Examiner.
`
`If approved, corrected drawings are required in reply to this Office action.
`12)0 The oath or declaration is objected to by the Examiner.
`Priority under 35 U.S.C. §§ 119 and 120
`
`13)[8;] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)[8;] All b)O Some' c)O None of:
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`1.[8;] Certified copies of the priority documents have been received.
`
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`• See the attached detailed Office action for a list of the certified copies not received.
`
`14)0 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 119(e) (to a provisional application).
`
`a) 0 The translation of the foreign language provisional application has been received.
`15)0 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
`Attachment(s)
`
`1) [8;] Notice of References Cited (PTO-892)
`2) C8] Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) C8]lnformation Disclosure Statement(s) (PTO-1449) Paper No(s) M.
`
`Interview Summary (PT0-413) Paper No(s). __ .
`4) 0
`5) 0 Notice of Informal Patent Application (PTO-152)
`6) 0 Other:
`
`U,S. Patent and Trademark Office
`PTO-326 (Rev. 04-01)
`
`Office Action Summary
`
`Part of Paper No.7
`
`PAPM DL00000431
`
`Papst Licensing GmbH & Co. KG - Exhibit 2005, p. 2
`
`

`

`Application/Control Number: 09/331,002
`Art Unit: 2182
`
`Page 2
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`DETAILED ACTION
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`1.
`
`Claims 1-16 are presented for examination.
`
`Claim Rejections - 35 USC § 112
`
`2.
`
`The following is a quotation of the second paragraph of35 U.S.C. 112:
`
`The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the
`subject matter which the applicant regards as his invention.
`
`3.
`
`Claim 13 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for
`
`failing to particularly point out and distinctly claim the subject matter which applicant regards as
`
`the invention.
`
`4.
`
`Claim 13 recites the limitation "the hard disk" in line 4. There is insufficient antecedent
`
`basis for this limitation in the claim.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`The following is a quotation of35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`6.
`
`Claims 1-16 are rejected under 35 U.S.C. 1 03(a) as being unpatentable over Applicant's
`
`admission of prior art [AAPA] and McNeill, Jr. et al. (U.S. Patent No. 5,499,378).
`
`7.
`
`Regarding claims 1,5,6, 12 and 13, AAPA teaches an interface for communication
`
`between a host device and a transmit/receive device comprising:
`
`PAPMDL00000432
`
`Papst Licensing GmbH & Co. KG - Exhibit 2005, p. 3
`
`

`

`'-
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`Application/Control Number: 09/331,002
`Art Unit: 2182
`
`Page 3
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`a processor [Application's specification, p. 3, line 8];
`
`a memory [Application's specification, p. 3, line 9];
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`a first connecting device for interfacing the host device with the interface device via a
`
`multi-purpose interface of the host device [Application's specification, p. 3, lines 1-3];
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`a second connecting device for interfacing the interface device with the data
`
`transmit/receive device [Application's specification, p. 3, lines 9-12].
`
`AAP A teaches the host device communicates with the interface device by means of an
`
`interface-specific driver installed in the host device. AAP A does not teaches the interface device
`
`receiving an inquiry from the host device as to type of device is attached and responding to the
`
`host that it is an I/O device customary in a host device, whereupon the host device communicates
`
`with the interface device by means of the driver for the I/O device customary in a host device.
`
`McNeill, Jr. et al. teaches an interface device responds to the host inquiry command as to
`
`the type of device attached to the multi-purpose interface (SCSI interface) of the host device [col.
`
`2, lines 39-44; col. 5, lines 14-15 and 23-31], whereupon the host device communicates with the
`
`interface device by means of the driver for the I/O device customary in a host device [col. 3,
`
`lines 23-30; col. 5, lines 59-64].
`
`It would have been obvious to one of ordinary skill in the art at the time the invention
`
`was made to combine the teachings of AAPA and McNeill, Jr. et al. because it would enhance
`
`the system by allowing the host device communicates with a transmit/receive device, through an
`
`interface device, by means of the standard driver in the host device instead of installing a device-
`
`specific driver into the host device.
`
`PAPM DL00000433
`
`Papst Licensing GmbH & Co. KG - Exhibit 2005, p. 4
`
`

`

`"\
`
`Application/Control Number: 09/331,002
`Art Unit: 2182
`
`Page 4
`
`8.
`
`Regarding claims 2, 7-11, McNeill, Jr. et al. teaches the device drivers for 1/0 drivers
`
`custoinary in a host device comprise a hard disk driver, and the signal indicates to the host device
`
`that the host device is communicating with a hard disk [col. 5, lines 33-39].
`
`9.
`
`Regarding claim 3, McNeill, Jr. et al. teaches the system including a buffer for buffering
`
`data to be transferred between two systems [col. 5, lines 52-54].
`
`10.
`
`Regarding claims 4 and 14, McNeill, Jr. et al. teaches the communication is between a
`
`host and a SCSI device (SCSI target computer) [abstract). Therefore, the host and the device
`
`must have SCSI interfaces.
`
`11.
`
`Regarding claims 15 and 16, since they recite method of operating of the apparatus
`
`defined in the apparatus claims, they are rejected accordingly based on the rejection of the
`
`apparatus claims.
`
`Conclusion
`
`12.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Thuan N. Du whose telephone number is (703) 308-6292
`
`or via e-mail, thuan.du@uspto.gov. The examiner can normally be reached on Monday-Friday:
`
`9:00 AM - 5:30 PM, EST.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Thomas C. Lee can be reached on (703) 305-9717.
`
`Any inquiry of a general nature or relating to the status ofthis application or proceeding
`
`should be directed to the receptionist whose telephone number is (703) 305-3900.
`
`PAPM DL00000434
`
`Papst Licensing GmbH & Co. KG - Exhibit 2005, p. 5
`
`

`

`.--
`
`Application/Control Number: 09/331,002
`Art Unit: 2182
`
`Page 5
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`Any response to this action should be mailed to:
`
`Commissioner of Patents and Trademarks
`Washington, D.C. 20231.
`
`The fax numbers for the organization where this application or proceeding is assigned are
`
`as follow:
`
`•
`
`•
`
`•
`
`(703) 746-7238
`
`[After Final Communication]
`
`(703)746-7239
`
`[Official Communication]
`
`(703) 746-7240
`
`[Non-Official Communication]
`
`and/or:
`
`(703) 746-5668 (use this fax number, only after approval by Examiner, for
`
`"INFORMAL" or "DRAFT" communication).
`
`Hand-delivered responses should be brought to:
`
`Crystal Park II
`2121 Crystal Drive
`Arlington, VA 22202
`Fourth Floor (Receptionist).
`
`fHOMAS LEE
`SUPERVISORY PATENT EXAMINER
`TECHNOLOGY CENTER 2100
`
`ThuanN. Du
`December 7, 2001
`
`PAPM DL00000435
`
`Papst Licensing GmbH & Co. KG - Exhibit 2005, p. 6
`
`

`

`.--
`
`Notice of References Cited
`
`Application/Control No .
`
`09/331,002
`
`Examiner
`
`Thuan N. Du
`
`U.S. PATENT DOCUMENTS
`
`Applicant(s)/Patent Under
`Reexamination
`TASLER, MICHAEL
`
`Art Unit
`
`2182
`
`Page 1 of 1
`
`,
`
`I<
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`Name
`
`Classification
`
`A US-5,297,124
`
`B US-5,430,855
`
`C US-5,499,378
`
`D US-5,548,783
`
`E US-6,012,113
`
`03-1994
`
`Plotkin et al.
`
`07-1995
`
`Walsh et al.
`
`03-1996
`
`McNeill et al.
`
`08-1996
`
`Jones et al.
`
`01-2000
`
`Tuckner, Steven A.
`
`703/25
`
`703/23
`
`703/24
`
`710/15
`
`710/64
`
`F US-
`
`G US-
`
`H US-
`
`I
`
`J
`
`US-
`
`US-
`
`K US-
`
`L US-
`
`M US-
`
`I<
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`Country
`
`Name
`
`Classification
`
`FOREIGN PATENT DOCUMENTS
`
`I<
`
`N
`
`0
`
`P
`
`Q
`
`R
`
`S
`
`T
`
`U
`
`V
`
`W
`
`X
`
`NON-PATENT DOCUMENTS
`
`Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
`
`A copy of thiS reference IS not being furnished with thiS Office action. (See MPEP § 707.05(a).)
`Dates in MM·YYYY format are publication dates. Classifications may be US or foreign.
`
`US. Patent and Trademark Office
`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 7
`
`PAPM DL00000436
`
`Papst Licensing GmbH & Co. KG - Exhibit 2005, p. 7
`
`