Papst Licensing GmbH & Co., KG.
`Petitioner - Apple, Inc.
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2016-01860
`EXH. 2005
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`1
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`

`
`Applicant: Michael Tasler
`Application No.: 11/467,073
`Filed: August 24, 2006
`Date: December 18, 2007
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`Page — 2 —
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`IN THE CLAIMS:
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`Please cancel claims 1-96 and add new claims 97-108 as noted hereinafter:
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`1-96.
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`(cancelled).
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`97.
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`(new) An analog data generating and processing device (ADGPD) that is capable
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`of being used with a personal computer (PC), the PC having a multi-purpose interface (MP1) to
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`which device identification inquiry signals are periodically sent for a period of time, the PC
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`being capable of sending one or more data transfer requests via the MP1 of the PC, the PC
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`including at least one software driver that is stored in the PC without any user intervention, the
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`ADGPD comprising:
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`an ADGPD interface having an i/o port that is capable of being operatively
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`coupled to the MP1 of the PC, the ADGPD interface including circuitry that is capable of
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`allowing, when the i/o port is operatively coupled to the MP1 of the PC, digital data to be
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`transferred to or received from the PC via the i/o port and the MP1 of the PC;
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`an ADGPD processor having a central processing unit that is operatively coupled
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`to the circuitry of the ADGPD interface;
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`a data storage memory that is operatively coupled to the ADGPD processor;
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`a program memory that is operatively coupled to the central processing unit of the
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`ADGPD processor, the program memory containing a first and a second set of instructions stored
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`therein;
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`a unidirectional sensor that is operatively coupled to the ADGPD processor, the
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`unidirectional sensor being designed to process analog waves that, before being processed by the
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`2
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`

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`Applicant: Michael Tasler
`Application No.: 11/467,073
`Filed: August 24, 2006
`Date: December 18, 2007
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`Page — 3 —
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`unidirectional sensor, have propagated external to and not in substantial proximity to the
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`ADGPD;
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`wherein the first set of instructions, when executed by the ADGPD processor,
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`causes the unidirectional sensor to generate analog data from one or more analog waves that,
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`before being processed by the unidirectional sensor, have propagated external to and not in
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`substantial proximity to the ADGPD;
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`wherein the first set of instructions, when executed by the ADGPD processor, also
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`causes digitized data that is representative of the analog data to be stored in the data storage
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`memory without intervention at any time by the PC;
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`wherein the first set of instructions, when executed by the ADGPD processor, are
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`capable of causing the digitized data to be stored in the data storage memory before the i/o port is
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`connected to the MP1 of the PC;
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`wherein the ADGPD is adapted to cause, after the i/o port has been operatively
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`coupled to the MP1 of the PC and after one of the device identification inquiry signals has been
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`received by the i/o port, a response signal to be automatically sent to the PC without any user
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`intervention by means of the PC, the response signal containing identification data that is
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`sufficient to allow the PC to select the at least one software driver that may be subsequently used
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`by the PC to retrieve files of digital data from the data storage memory of the ADGPD;
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`wherein the second set of instructions are adapted to be executed by the ADGPD
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`processor after the i/o port has been operatively coupled to the MP1 of the PC and after one of
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`the data transfer requests has been received by the i/o port, the second set of instructions, when
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`executed by the ADGPD processor, causing a transfer of at least some of the digitized data,
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`3
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`

`
`Applicant: Michael Tasler
`Application No.: l 1/467,073
`Filed: August 24, 2006
`Date: December 18, 2007
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`Page — 4 —
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`including at least some of the digitized data that is generated before the i/o port is coupled to the
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`MP1 of the PC, from the data storage memory to the PC by means of the at least one software
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`driver;
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`wherein the second set of instructions, when executed by the ADGPD processor,
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`causes a transfer of at least some of the digitized data from the data storage memory after a
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`command has been issued by the at least one software driver and after the i/0 port has been
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`operatively coupled to the MP1 of the PC; and
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`wherein the central processing unit of the ADGPD processor is operatively
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`coupled to the program memory so that the central processing unit of the ADGPD processor is
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`adapted to execute both the first and second sets of instructions.
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`98.
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`(new) The ADGPD of claim 97, fiirther comprising an output device that is
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`operatively coupled to the central processing unit of the ADGPD processor, the output device
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`being capable of generating one or more analog waves that are representative of at least some of
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`the analog data that is generated by the unidirectional sensor.
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`99.
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`(new) The ADGPD of claim 97, wherein the identification data of the response
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`signal indicates to the PC that the ADGPD is a mass storage device.
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`100.
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`(new) The ADGPD of claim 99,
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`wherein the ADGPD further comprises a third set of instructions stored in the
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`program memory that are adapted to be executed by the central processing unit of the ADGPD
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`processor afier the i/o port has been connected to the MP1 of the PC and alter the response signal
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`has been received by the PC, the third set of instructions, when executed by the central
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`processing unit of the ADGPD processor, causing file allocation table information to be sent to
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`4
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`

`
`Applicant: Michael Tasler
`Application No.: 11/467,073
`Filed: August 24, 2006
`Date: December 18, 2007
`Page — 5 —
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`the PC to enable the PC to transfer information to and from the ADGPD as if the ADGPD were a
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`mass storage device, and
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`wherein the second set of instructions, when executed by the central processing
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`unit of the ADGPD processor, causes digitized data to be transferred to the PC in a mass storage
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`device format.
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`101.
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`(new) The ADGPD of claim 100,
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`wherein the identification data of the response signal indicates to the PC that the
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`ADGPD is a mass storage device that operates in a manner consistent with a hard disk drive,
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`wherein the third set of instructions, when executed by the central processing unit
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`of the ADGPD processor, cause a Virtual boot sequence to be sent to the PC which includes at
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`least information that is representative of a number of sectors associated with a mass storage
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`device that operates in a manner consistent with a hard disk drive;
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`wherein the file allocation table information includes at least a start location of a
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`file allocation table; and
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`wherein the mass storage device format is consistent with a data transfer format
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`used in a hard disk drive.
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`102.
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`(new) The ADGPD of claim 97, wherein the ADGPD processor and the program
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`memory are adapted to cause files of digital data stored in the data storage memory to be directly
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`transferred to an input/output device by means of the i/0 port of the ADGPD.
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`103.
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`(new) The ADGPD of claim 102, wherein the ADGPD processor and the
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`program memory are adapted to allow an aspect of operation of the ADGPD other than the
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`5
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`

`
`Applicant: Michael Tasler
`Application No.: 1 1/467,073
`Filed: August 24, 2006
`Date: December 18, 2007
`Page — 6 —
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`transfer of files of digital data from the data storage memory to the PC to be controlled by means
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`of the PC.
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`104.
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`(new) The ADGPD of claim 97, wherein the ADGPD processor and the ADGPD
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`interface are not formed in the same chip.
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`105.
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`(new) The ADGPD of claim 97, wherein the unidirectional sensor is designed to
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`be interchangeably operatively coupled to the ADGPD processor.
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`106.
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`(new) The ADGPD of claim 97, wherein the identification data of the response
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`signal is not consistent with the true nature of the unidirectional sensor.
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`107.
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`(new) The ADGPD of claim 97, wherein the software driver is located in a BIOS
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`of the PC.
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`108.
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`(new) A combination comprising the ADGPD of claim 97 and the PC of claim
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`6
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`

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`Applicant: Michael Tasler
`Application No.: ll/467,073
`Filed: August 24, 2006
`Date: December l8, 2007
`Page — 7 —
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`REMARKS
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`Claims l—96 have been cancelled, and new claims 97-108 has been added in this
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`supplemental preliminary amendment.
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`It is the specific intention of the applicant that new
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`claims 97-107 do not read on the combination of a personal computer and an analog data
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`generating and processing device. Rather, such claims read on an infringing analog data
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`generating and processing device by itself.
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`It is respectfully submitted that the new claims are patentable over all of the prior art of
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`record, including the references that the Examiner has been asked to assume, for the sake of
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`argument, are prior art with respect to this application. An exemplary analysis in support of this
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`conclusion is presented hereinafter with respect to prior art US Patent No. 5,917,545.
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`One feature of the new claims is that they affirmatively recite that a “central processing
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`unit of an ADGPD processor” is adapted to execute both a “first” and a “second” set of
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`instructions that , when executed, cause a unidirectional sensor to generate analog data, and to
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`transmit digitized data representative of the analog data to a PC. Exemplary structure
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`corresponding to this claim element is, for example, the central processing unit of the DSP
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`shown in Figure 2 of the subject application. The new claims, of course, are not limited to this
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`exemplary structure.
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`The ‘545 patent does not, for example, teach or suggest the above-described subject
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`matter of the new claims. Figure 3 of the ‘545 patent shows a CPU ll8, a PC card i/f 120, and
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`two bus buffers A and B. The CPU H8 is not capable of executing a set of instructions to cause
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`a transfer of information from the memory 119 to a notebook computer to which the device is
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`connected. One reason for this is that, for example, the bus buffers A and B are activated to
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`7
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`

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`Applicant: Michael Tasler
`Application No.: 11/467,073
`Filed: August 24, 2006
`Date: December 18, 2007
`Page — 8 —
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`electrically isolate the CPU 118 from accessing the memory when the device is connected to a
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`PC. For this reason alone, for example, the new claims should be found to be patentable over the
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`‘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.
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`In this regard, the new claims recite, for example, that the ADGPD is adapted
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`to cause a “response signal” to be automatically sent to the PC without any user intervention by
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`means of the PC, the response signal containing data that is sufficient to allow the PC to select a
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`software driver that is stored in the PC.
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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.
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`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 information to be sent to a PC
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`that allows the PC to understand how to retrieve files of digital data from the Figure 2 device
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`“without any user intervention by means of the PC.” The use of this phrase in the newly
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`submitted claims means that (i) no user has to load an applications level program on the PC at
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`any time and/or that (ii) no user has to interact with the PC (e.g., setting up a file system) at any
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`time in order to “allow the PC to select the at least one software driver” as quoted in the claims.
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`The new claims, of course, are not limited to the structure illustrated in Figure 2 of the
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`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. In direct contrast to the claimed subject
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`matter, all devices disclosed in the ‘82l patent affirmatively require user intervention in order to
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`

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`Applicant: Michael Tasler
`Application No.: 11/467,073
`Filed: August 24, 2006
`Date: December 18, 2007
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`Page — 9 —
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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 ‘82l 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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`successfillly 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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`system of the ‘S21 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 ‘S21 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.
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`In a previously filed paper, the
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`Applicant: Michael Tasler
`Application No.: ll/467,073
`Filed: August 24, 2006
`Date: December 18, 2007
`Page — 10 —
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`unsigned attorney stated that he assumed that the product illustrated in these documents operated
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`in a manner consistent with, for example, the above—described US Patent No. 5,9l7,545.
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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 and physically
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`disconnect the CPU 118 from the memory 1 l9 while the device is plugged into and receives
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`power from a notebook computer are not readily apparent in the Nikon Coolpix 100 product that
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`was 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 from the memory
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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.
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`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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`

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`Applicant: Michael Tasler
`Application No.: l 1/467,073
`Filed: August 24, 2006
`Date: December 18, 2007
`Page — 11 —
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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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`infonnation. 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 finds that the cl aims are
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`clearly patentable over all of the previously submitted information.
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`A short validity analysis with respect to the sample Nikon Coolpix 100 camera discussed
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`above is presented hereinafter. The Nikon Coolpix 100 camera does not, for example, teach or
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`suggest one or more features of the new claims. One feature of the new claims that is not taught
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`or suggested by the product is, for example, a central processing unit that is adapted both to
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`cause analog data to be generated and to cause digitized data representative of the analog data to
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`be transferred to a personal computer as discussed above. The microprocessor of the Nikon
`
`Coolpix 100 camera that was analyzed cannot do both tasks because, for example, the
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`microprocessor is put into a state it is incapable of accessing a data storage memory when the
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`camera is plugged into a notebook computer. For this reason alone, for example, the new claims
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`should be found to 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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`11
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`

`
`Applicant: Michael Tasler
`Application No.: 11/467,073
`Filed: August 24, 2006
`Date: December 18, 2007
`Page — 12 —
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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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`R pe t 11Z>bm
`
`f
`
`. Salmon
`
`Attorney for Applicant
`Registration No. 37,435
`
`December 18, 2007
`Welsh & Katz, Ltd.
`120 South Riverside Plaza, 22nd Floor
`Chicago, IL 60606
`Telephone (312) 655-1500
`Facsimile (312) 655-1501
`E-mail jwsalmon@we1shkatz.com
`
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