Papst Licensing GmbH & Co., KG.
`Petitioner - Apple, Inc.
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2016-01860
`EXH. 2004
`
`1
`
`
`Petitioner - Apple, Inc.
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2016-01860
`EXH. 2004
`
`1
`
`
`
`Applicant: Michael Tasler
`Application No.: 1 1/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page ~» 2 —
`
`IN THE CLAIMS:
`
`Please cancel claims 17-39, and add new claims 40-84 as noted hereinafter:
`
`l—39.
`
`(cancelled).
`
`40.
`
`(new) An analog data generating and processing device for use with a personal
`
`computer having at least one multi—purpose interface to which inquiry signals are periodically
`
`sent as to what type of device is operatively connected thereto, the analog data generating and
`
`processing device comprising:
`
`an input/output port that is to be operatively connected to the multi—purpose
`
`interface of the personal computer;
`
`a sensor that is mounted within a housing, the sensor being adapted to receive
`
`analog wave signals from a source that is external to the housing and that is not located in
`
`substantial proximity to the sensor, the sensor being further adapted to generate sets of analog
`
`data from the analog wave signals that it receives;
`
`an analog to digital converter that is operatively connected to the sensor and that
`
`generates a set of digitized analog data from each set of analog data;
`
`a circuit that includes a processor and a first memory that are operatively
`
`connected to the analog to digital converter, a first set of instructions being stored in the first
`
`memory that are utilized by the processor to cause the sets of digitized analog data to be stored in
`
`the first memory irrespective of whether or not the analog data generating and processing device
`
`has been recognized by the personal computer;
`
`2
`
`
`
`Applicant: Michael Tasler
`Application No.: 11/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page M 3 —
`
`the first set of instructions being further adapted to cause the sets of digitized
`
`analog data to be stored in the first memory before the input/output port is connected to a multi-
`
`purpose interface of the personal computer;
`
`a second set of instructions being stored in the first memory that are utilized by
`
`the processor to cause a response signal to be automatically and without user intervention sent
`
`from the input/output port to the multi—purpose interface after they have been operatively
`
`connected together and after an inquiry signal has been received by the input/output port, the
`
`response signal containing information that, when received and processed by a personal
`
`computer, allows the personal computer to automatically and without user intervention recognize
`
`the analog data generating and processing device as being a device having digital data that is
`
`stored therein;
`
`a third set of instructions being stored in the first memory that are utilized by the
`
`processor, after the analog data generating and processing device has been automatically
`
`recognized by the personal computer, and while the input/output port is operatively connected to
`
`the multi-purpose interface, to cause user selected ones of the digitized sets of analog data,
`
`including any digitized data sets that are generated before the input/output port is connected to
`
`the inulti—purpose interface of the personal computer, to be transferred from the first memory,
`
`through the input/output port, through the rnulti—purpose interface, and to the personal computer;
`
`and
`
`the third set of instructions being further adapted to cause the user selected
`
`digitized data sets to be transferred to the personal computer, after the input/output port has been
`
`connected to the multi—purpose interface of the personal computer and after the analog data
`
`3
`
`
`
`Applicant: Michael Tasler
`Application No.: l l/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page — 4 —
`
`generating and processing device has been recognized by the personal computer, by means of a
`
`software driver that is stored in a second memory of the personal computer without user
`
`intervention.
`
`41.
`
`(new) A combination comprising the analog data generating and processing
`
`device of claim 40 and a personal computer.
`
`42.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`analog wave signals comprise electromagnetic radiation.
`
`43.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`sensor is adapted to have two-way communication with the personal computer.
`
`44.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`analog wave signals are generated by a medical device.
`
`45.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`processor, first memory and circuit form a flexible interface.
`
`46.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`processor, first memory and circuit form a universal interface.
`
`47.
`
`The analog data generating and processing device of claim 40, wherein the sensor
`
`comprises an electronic measuring device.
`
`48.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`sensor is electrically connected to the processor and the first memory by a two-way
`
`communication line.
`
`4
`
`
`
`Applicant: Michael Tasler
`Application No.: l l/467,073
`Filed: August 24, 2006
`Date: July 17, 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
`
`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
`
`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
`
`generating and processing device.
`
`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.
`
`54.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`sensor receives power when the digitized sets of analog data are being transferred to the personal
`
`computer.
`
`54.
`
`(new) The analog data generating and processing device of claim 40, wherein
`
`receipt and processing of the response signal by the personal computer allows it to communicate
`
`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.
`
`5
`
`
`
`Applicant: Michael Tasler
`Application N0.: 1 l/467,073
`Filed: August 24, 2006
`Date: July l7, 2007
`Page w 6 —
`
`55.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`first memory of the analog data generating and processing device comprises a buffer memory.
`
`56.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`input/output port is adapted to be connected to a SCSI interface of the personal computer.
`
`57.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`processor comprises a digital signal processor.
`
`5 8.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`sets of digitized analog data are transferred to the personal computer in a foiinat suitable for a
`
`mass storage device present in the personal computer.
`
`59.
`
`(new) The analog data generating and processing device of claim 40, wherein a
`
`root directory is created in the first memory which can be accessed by the personal computer.
`
`60.
`
`(new) The analog data generating and processing device of claim 40, wherein a
`
`configuration file is stored in the first memory.
`
`61.
`
`(new) The analog data generating and processing device of claim 40, wherein a
`
`configuration file is stored in the first memory that allows a user to configure the analog data
`
`generating and processing device as being a specific mass storage device.
`
`62.
`
`(new) The analog data generating and processing device ofelaim 40, wherein a
`
`configuration file is stored in the first memory that allows a user to configure the analog data
`
`generating and processing device as being a specific hard disk drive.
`
`63.
`
`(new) The analog data generating and processing device of claim 40, wherein a
`
`wire based connection is used to connect the input/output port to the multi—puipose interface of
`
`the personal computer.
`
`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
`
`sensor is detachably coupled to the analog to digital converter.
`
`65.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`sensor is adapted to receive data from the personal computer.
`
`66.
`
`(new) The analog data generating and processing device of claim 40, wherein the
`
`sensor is not directly involved in the generation of the response signal.
`
`67.
`
`(new) An analog data generating and processing device (ADGPD), comprising:
`
`a circuit that is adapted to be operatively coupled to a multi-purpose user interface
`
`(MPUI) of a personal computer (PC) to which the PC periodically sends device identification
`
`signals and to which the PC is capable of sending data transfer requests;
`
`a first set of instructions stored in an ADGPD memory that are adapted to cause
`
`analog data to be generated from one or more analog wave signals from a source that is both
`
`external to and not located in substantial proximity to the ADGPD, the first set of instructions
`
`being further adapted to cause digitized analog data that is representative of the analog data to be
`
`stored in the ADGPD memory;
`
`the first set of instructions being further adapted to cause the sets of digitized
`
`analog data to be stored in the ADGPD memory before the circuit is connected to a multi-
`
`purpose interface of the PC;
`
`a second set of instructions stored in the ADGPD memory that is adapted to
`
`cause, after a device identification signal has been received and processed, a response signal to
`
`be automatically and without user intervention sent to the PC that contains data which indicates
`
`to the PC how the PC can communicate with and receive data from the ADPGD;
`
`7
`
`
`
`Applicant: Michael Tasler
`Application No.: 11/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page ~ 8 —
`
`a third set of instructions stored in the ADGPD memory that are adapted to cause,
`
`after a data transfer request has been received and processed, a transfer of at least some of the
`
`digitized analog data, including any digitized data sets that are generated before the circuit is
`
`coupled to the multi-purpose interface of the PC, from the ADGPD memory to the PC; and
`
`the third set ofinstructions being further adapted to affect the transfer of user
`
`selected digitized data sets by means of a software driver that is stored in a memory of the PC
`
`without user intervention.
`
`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 of claim 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.
`
`75.
`
`(new) The ADGPD ofclaim 67, wherein the response signal is adapted to inform
`
`a PC that the ADGPD is a mass storage device.
`
`8
`
`
`
`Applicant: Michael Tasler
`Application No.: 1 l/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page — 9 -
`
`76.
`
`(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.
`
`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.
`
`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.
`
`9
`
`
`
`Applicant: Michael Tasler
`Application No.: 1 l/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page — 10 4
`
`REMARKS
`
`Claims 1-39 have been cancelled, and new claims 40~l l l are being submitted herewith
`
`for the Examiner's consideration. The new claims have been submitted to more clearly claim the
`
`applicant’s invention, and to better highlight how the claims distinguish over all the prior art of
`
`record in this and the parent application, either taken alone or in any purported combination.
`
`In the parent of this application, the undersigned attorney submitted information about
`
`various digital cameras and software provided by Eastman Kodak, Sony, Polaroid, Canon,
`
`Olympus, and Casio, and asked the Examiner to assume that this information is prior art.
`
`Assuming that it is prior art, this information, together with the other camera related patents are
`
`of record in the parent application, evidences that it was the accepted state of the art in the digital
`
`camera field around the time of the claimed invention to require a user to load applications
`
`software onto a computer before image data could be transferred to the computer from a digital
`
`camera. The scanner related references (e.g., USP 5,508,821) also require user intervention of
`
`some sort to allow scanned images to be transferred over to a personal computer.
`
`Deviations away from the accepted state ofthe art are evidence of patentability of an
`
`invention. See, W.L. Gore &_/lssociates, Inc. v. Garlock, Inc, 721 F.2d 1540,
`
`1552 (C.A.Fed.1983) (The fact that “Dr. Gore .
`
`.
`
`. proceeded contrary to the accepted wisdom of
`
`the prior art .
`
`.
`
`. is strong evidence of nonobviousness”). See also, Tec Air, Inc. v. Denso Mfg.
`
`Mich, Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999) (“To rebut a prima facie case of obviousness
`
`based on p1'lOI‘ art, objective evidence of nonobviousncss may be used, including whether the
`
`invention was contrary to accepted wisdom of the prior art”). The recent Supreme Court
`
`10
`
`
`
`Applicant: Michael Tasler
`Application No.: l l/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page ~ 11 A
`
`decision in the KSR case does not overrule and is not inconsistent with the above—noted Gore or
`
`Tec Air decisions of the F edcral Circuit.
`
`All of the currently pending claims require an automatic and without user intervention
`
`feature that allows a computer to understand how to talk to and receive data from the claimed
`
`device without a user having to, for example, load applications software onto a computer before
`
`being able to transfer data to it.
`
`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 from the accepted state of the art evidenced by
`
`the camera, software and scanner references of record, which affirmatively require user
`
`intervention — a user must, for example, load applications software onto a computer to be able to
`
`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
`
`teaches or suggests this claim element.
`
`As one example, and assuming for the sake of argument that a “plug and play keyboard”
`
`is prior art and that it is proper to combine such assumed prior art with a camera reference such
`
`as US Patent No. 5,470,335, such a purported combination of references would not render
`
`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
`
`11
`
`
`
`Applicant: Michael Tasler
`Application No: l 1/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page - 12 —
`
`connected to a personal computer and, therefore, the combination of the keyboard with the ‘335
`
`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
`
`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
`
`dependent claim that recites a combination of a personal computer with the device cl aimed in the
`
`corresponding independent claim. 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
`
`or sale of the claimed device, not by the combination of the claimed device and a personal
`
`computer.
`
`As a follow-up to the previously filed notice of litigation, additional lawsuits involving
`
`Fujifilm, Samsung, Olympus, MEI and JVC have been filed with respect to the same patents at
`
`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
`
`connection with this and the parent application, and to base his decision on the patentability of
`
`the currently pending claims only on the remarks made in this paper, not on arguments or
`
`amendments made in any other paper or any application of which this application claims priority.
`
`It is the specific intention ofthc 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.
`
`12
`
`
`
`Applicant: Michael Tasler
`Application No.: l l/467,073
`Filed: August 24, 2006
`Date: July 17, 2007
`Page ~ 13 -
`
`It is respectfully submitted that the new claims are in condition for allowance and,
`
`therefore, a formal notice to that effect is earnestly solicited.
`
`In this regard, the Examiner is
`
`respectfully requested to contact the undersigned attorney upon entry of this amendment.
`
`sp§ct§1lysubmi 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 jwsalmongabwelshkatz.com
`
`13
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