Papst Licensing GmbH & Co., KG.
`Petitioner - Apple, Inc.
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2016-01841
`EXH. 2006
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`1
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`

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`Applicant: Michael Tasler
`Application No.: 11/467,092
`Filed: August 24, 2006
`Date: January 2, 2008
`Page — 7 —
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`the memory 119 to a notebook computer to which the device is connected. One reason for this is
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`that, for example, the bus buffers A and B are activated to electrically isolate the CPU 118 from
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`accessing the memory when the device is connected to a PC. For this reason alone, for example,
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`the new claims should be found to be patentable over the ‘545 patent.
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`Other features of the new claims further evidence their patentability over all of the
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`references that have been submitted to the Examiner assuming, for the sake of argument, that
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`they are prior art. In this regard, the new claims recite, for example, that the ADGPD is adapted
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`to cause a “response signa ” to be automatically sent to the PC without any user intervention by
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`means of a deice external to the ADGPD. The new claims also recite that the response signal
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`contains data that is consistent with the ADGPD being a device that can transfer files of digital
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`data by means of a communications protocol (e.g., the SCSI command set), and that the ADGPD
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`thereafter is subsequently able to process data transfer commands in accordance with the
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`communications protocol.
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`Exemplary structure that corresponds to this claim element is shown, for example, in
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`Figure 2 of the patent application. In accordance with this exemplary embodiment, the central
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`processing unit of the DSP shown in Figure 2 is adapted to cause a response signal to be sent to a
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`connector via an interface, the response signal containing information that is consistent with the
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`Figure 2 device being able to transfer files of digital data in accordance with a communications
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`protocol (e.g., the SCSI command set) “without any user intervention by means of a device
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`external to the ADGPD.”
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`The use of the phrase “without any user intervention by means of a device external to the
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`ADGPD” in the newly submitted claims means that (i) no user has to load an applications level
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`2
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`

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`Applicant: Michael Tasler
`Application No.: 1 1/467,092
`Filed: Augnlst 24, 2006
`Date: January 2, 2008
`Page — 8 —
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`program onto a device external to the ADGPD (e. g., a PC) at any time and/or that (ii) no user has
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`to interact with a device external to the ADGPD (e.g., setting up a file system on a PC ) at any
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`time in order to allow the ADGPD to “thereafter subsequently” be “able to process data transfer
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`requests in accordance with the communications protocol (e.g, the SCSI command set). The new
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`claims are not limited to the structure illustrated in Figure 2 of the application.
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`The ‘82l patent to Murata does not, for example, teach or suggest structure that
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`corresponds to the above-described claim feature.
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`In direct contrast to the claimed subject
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`matter, all devices disclosed in the ‘821 patent affirrnatively require user intervention in order to
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`cause the PC to understand how to communicate with the scanner disclosed in the patent. A
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`short analysis in support of this conclusion follows.
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`Column 4, lines 20-35 of the ‘82l patent state that an “mkfs” or “newfs” UNIX command
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`must be executed before the scanner can be recognized. These commands are operating system
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`commands, and have to be entered by the user or be embedded in an application program
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`running on a workstation to which the ‘S21 patent scanner is connected. The commands require
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`parameters to be given, including at least mkfs i~node device_name. This means that, for
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`example, the user has to enter the node at which the file system is to be made and the device
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`name (associated with the device file and driver in the system). These parameter values are not
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`standard and may differ according to the actual hardware configuration of the workstation. If
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`these commands are embedded in an application program, the application program can only be
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`successfully run on different workstations if there is an appropriate means for entering the
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`parameters by the user.
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`As readily apparent to one of ordinary skill in the relevant art, the UNIX operating
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`3
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`

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`Applicant: Michael Tasler
`Application No.: l 1/467,092
`Filed: August 24, 2006
`Date: January 2, 2008
`Page — 9 —
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`system of the ‘E321 patent does not automatically recognize devices, nor does it perform data
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`transmission with a device even though the device may emulate the UNIX file system. Detailed
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`operator instructions or an application program containing the embedded instructions is required
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`to administer and coordinate the data exchange described in the ‘821 patent. For this reason
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`alone, for example, the new claims should be found to be patentable over the ‘821 patent.
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`A Japanese language brochure describing a Nikon Coolpix 100 camera, an English
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`translation thereof, and a one page specification describing the Nikon Coolpix 100 camera
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`previously were submitted for the Examiner’s consideration. In a previously filed paper, the
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`undersigned attorney stated that he assumed that the product illustrated in these documents
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`operated in a manner consistent with, for example, the above-described US Patent No.
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`5,917,545.
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`Subsequent to the filing of that paper, an actual sample of the Nikon Coolpix 100 camera
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`was obtained and analyzed. This analysis indicates that the sample product may not have exactly
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`the same construction as the device that is illustrated in the ‘545 patent. For example, the bus
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`buffers A and B shown in Figure 3 of the ‘545 patent (that are used to electrically isolate the
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`CPU 118 from the memory 119 while the device is plugged into and receives power from a
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`notebook computer) are not readily apparent in the Nikon Coolpix 100 product that was
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`analyzed.
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`The analysis also appears to indicate, however, that a microprocessor is put in a state
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`where it is incapable of accessing a memory of the sample product when the sample product is
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`plugged into and receives power from a notebook computer. As such, the microprocessor of the
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`sample product is not capable of executing a set of instructions that cause data fiom the memory
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`4
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`

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`Applicant: Michael Tasler
`Application No.2 ll/467,092
`Filed: August 24, 2006
`Date: January 2, 2008
`Page — 10 —
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`to be transferred to the notebook computer.
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`In previously filed papers, the Examiner was asked to assume, for the sake of argument,
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`that various camera manuals, cameras, software and products (e. g., the information previously
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`submitted ‘about the Nikon Coolpix 100 camera and various Casio products) actually were prior
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`art. For purposes of clarity, the applicant takes this opportunity to reiterate that no admission is
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`made as to whether or not any such material actually is prior art. In this regard, applicant
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`disputes that all such previously submitted material is prior art to the newly submitted claims.
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`Regarding the Nikon Coolpix 100 camera and information relating to the above-
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`referenced camera manuals, etc., the assignee currently is investigating whether any of this
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`information actually is prior art. As such, the applicant and assignee respectfully ask that the
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`Examiner consider whether or not the currently pending claims are patentable over all such
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`information. The issue of whether or not any such information is or is not prior art to the
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`currently pending claims would become irrelevant if the Examiner were to agree with the
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`undersigned attorney that the new claims are clearly patentable over all of this information.
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`An IDS is being submitted herewith. One of the items referenced in the IDS is the above-
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`referenced used Nikon Coolpix 100 camera that was obtained and analyzed. The Examiner is
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`respectfully requested to consider all of the information disclosed in the IDS.
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`A short validity analysis with respect to the sample Nikon Coolpix 100 camera is
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`presented hereinafter. The Nikon Coolpix 100 camera does not, for example, teach or suggest
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`one or more features of the new claims. One feature of the new claims that is not taught or
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`suggested by the product is, for example, the claim feature that concerns a “central processing
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`unit” of an “ADGPD processor” and a “program memory” that are configured both to cause
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`5
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`

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`Applicant: Michael Tasler
`Application No.: 1 1/467,092
`Filed: August 24, 2006
`Date: January 2, 2008
`Page A 11 ~
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`analog data to be generated and to cause digitized data representative of the analog data to be
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`transferred to an i/o connector as discussed above. The microprocessor of the Nikon Coolpix
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`100 camera that was analyzed cannot do both tasks because, for example, the microprocessor is
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`put into a state it is incapable of accessing a data storage memory when the camera is plugged
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`into a notebook computer. For this reason alone, for example, the new claims should be found to
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`be patentable over the sample Nikon Coolpix 100 product that was obtained.
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`The Examiner is respectfully requested to consider only the remarks made in this
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`amendment when considering the patentability of the new claims submitted in this supplemental
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`preliminary amendment.
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`In this regard, the Examiner is respectfully asked to disregard all
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`remarks and amendments made in all papers previously filed in this application or previously
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`filed in any application of which the instant application claims priority.
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`It 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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`The Examiner is respectfully requested to contact the undersigned attorney upon entry of
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`this supplemental preliminary amendment.
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`Respect
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`ly submitted
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`e
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`e
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`. Salmon
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`January 2, 2008
`Welsh & Katz, Ltd.
`120 South Riverside Plaza, 22nd Floor
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`Attorney for Applicant
`Registration No. 37,435
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`Chicago, IL 60606
`Telephone (312) 655-1500
`Facsimile (312) 655-1501
`E—mail jwsalmon@welshkatz.com
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`6