Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 1 of 19
`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 1 of 19
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`EXHIBIT 5
`EXHIBIT 5
`
`

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`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 2 of 19
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`AIRE-SAMS-00000274
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`Application/Control Number: 10/565,732
`Art Unit: 2612
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`Page 2
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`DETAILED ACTION
`
`Claims status
`
`1.
`
`In the amendment filed on October 10, 2009, claim 1 has been amended. Therefore,
`claims 1-16 are currently pending for examination.
`
`2.
`
`The text of those sections of Title 35, U.S. Code not included in this action can be found
`in a prior Office action.
`
`Specification
`The substitute specification filed 10 June 2009 has NOT been entered because it does not
`3.
`conform to 37 CFR 1.125(b) and (c) because: a clean copy has not been provided.
`A substitute specification must not contain new matter. The substitute specification must
`be submitted with markings showing all the changes relative to the immediate prior version of
`the specification of record. The text of any added subject matter must be shown by underlining
`the added text. The text of any deleted matter must be shown by strike-through except that
`double brackets placed before and after the deleted characters may be used to show deletion of
`five or fewer consecutive characters. The text of any deleted subject matter must be shown by
`being placed within double brackets if strike-through cannot be easily perceived. An
`accompanying clean version (without markings) and a statement that the substitute specification
`contains no new matter must also be supplied. Numbering the paragraphs of the specification of
`record is not considered a change that must be shown.
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 3 of 19
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`AIRE-SAMS-00000275
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`Application/Control Number: 10/565,732
`Art Unit: 2612
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`Page 3
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`Drawings
`Objections to drawings from previous office action are withdrawn and substitute
`4.
`drawings filed on 10/09/2009 are entered.
`
`Claim Rejections - 35 USC § 103
`Claims 1-6, 8-12 and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`5.
`Schuermann (U.S. Patent No. 5,287,112) in view of Charrat et al. (hereinafter "Charrat" -
`
`US. Patent No. 6,905,074).
`
`Regarding claim 1, Schuermann discloses a communication apparatus for setting up a
`data connection between intelligent devices, comprising:
`
`* a transmission oscillator (resonant circuit 28) for carrying out a contactless data exchange, said
`oscillator including a coil (Column 4 Lines 42-44 and 50-52 );
`
`* a communication element (control circuit 16) which is connected to the coil and the data
`processing component of an intelligent device and which emits search signals via the coil to
`receive a response from another intelligent device (Column 3 Lines 46-54);
`
`Schuermann does not disclose:
`
`* a measuring device for monitoring a property of the transmission oscillator which outputs a
`control signal when ascertaining a change of the monitored property; and
`
`* a switching apparatus which is connected to the measuring device and the communication
`element and which switches on the communication element when it has received a control signal
`from the measuring device.
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 4 of 19
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`AIRE-SAMS-00000276
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`Application/Control Number: 10/565,732
`Art Unit: 2612
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`Page 4
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`However, the preceding limitations are known in the art of communications. Charrat
`discloses an RFID reader with an active standby mode comprising a measuring device for
`monitoring a property of the transmission oscillator which outputs a control signal when
`ascertaining a change of the monitored property (FIG. 3, 10 and Column 9 Lines 25-31, DETC3
`measures the amplitude of the envelope signal of the transmitter coil and Column 9 Lines 38-55;
`microprocessor compares the amplitude with the threshold and deduces the presence of a
`contactless integrated circuit and Column 4, Lines 43-47: variations higher than a determined
`variation threshold); and a switching apparatus which is connected to the measuring device and
`the communication element and which switches on the communication element when it has
`
`received a control signal from the measuring device (Column. 11, Lines 7-12: saving on the
`current consumption of a reader using the invention. Therefore, one can easily see that part of
`the communication circuits can be powered down/switched offby the microprocessor on standby
`mode since sending identification request from the reader and receiving identification message
`from the tag do not need to be performing during the standby mode).
`
`Therefore it would have been obvious to one ofordinary skill in the art at the time the
`invention was made to combine Schuermann with Charrat in order to send the identification
`
`request from the reader after the non-contact IC enters the proximity of the reader and therefore,
`prolongs battery life and/or saves energy of the reader (Charrat: Column 11 Lines 1-12).
`
`Regarding claim 2, Schuermann in view of Charrat teaches the apparatus of claim 1 as
`discussed above. Schuermann further discloses an assembly that is switchable to the
`transmission oscillator via a switch (the tuning circuit consisting ofcapacitor 56 and resistor 58
`connects to resonant circuit 34 via switch 54 to form new resonant circuit 60), said assembly
`
`

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`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 5 of 19
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`AIRE-SAMS-00000277
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`Application/Control Number: 10/565,732
`Art Unit: 2612
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`Page 5
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`causing an increase in the bandwidth of the oscillating circuit (Column 5 Lines 47-59; one of
`ordinary skill in the art could combine this arrangement from the transponder with the
`interrogator since it is known in the art that interrogators can act as transponders and receive data
`from other transponders).
`
`Regarding claim 3, Schuermann in view of Charrat teaches the apparatus of claim 2 as
`discussed above. Schuermann further discloses that the assembly is a resistive element (the
`tuning circuit is a resistive element since it comprises aresistor).
`
`Regarding claim 4, Schuermann in view of Charrat teaches the apparatus of claim 1 as
`discussed above. Schuermann further discloses including an assembly (capacitor 52) switchable
`to the transmission oscillator via a switch (switch 50), said assembly causing a change in the
`resonant frequency of the transmission oscillator (Column 5 Lines 13-19).
`
`Regarding claim 5, Schuermann in view of Charrat teaches the apparatus of claim 4 as
`discussed above. Schuermann further discloses that the assembly causes a reduction in the
`resonant frequency (Column 5 Lines 13-15).
`
`Regarding claim 6, Schuermann in view of Charrat teaches the apparatus of claim 4 as
`discussed above. Schuermann further discloses that that the assembly comprises a capacitor (see
`above).
`
`Regarding claim 8, Schuermann in view of Charrat teaches the apparatus of claim 1 as
`discussed above. Schuermann in view of Charrat does not explicitly disclose the switching
`apparatus has a time controller for cyclically switching the measuring device on and off.
`
`However, Charrat further discloses that pulses of 10 to 50 microseconds spaced out by
`
`

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`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 6 of 19
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`AIRE-SAMS-00000278
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`Application/Control Number: 10/565,732
`Art Unit: 2612
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`Page 6
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`200ms (Column 7 Lines 17-37). Since the DETC circuit does not need to measure the amplitude
`between the pulses, one can easily see that it can be switched off for 200ms after detection of
`each pulse and switched on cyclically.
`
`Therefore, it would have been obvious to the one of the ordinary skill in the art at the
`time of the invention was made to provide a switching apparatus with a time controller for
`cyclically switching the measuring device on and off in order to save the power more by turning
`off the idling components of the circuit and turning on only when required.
`
`Regarding claim 9, Schuermann in view of Charrat teaches the apparatus of claim 8 as
`discussed above. Charrat further discloses that the time controller keeps the on state of the
`measuring device shorter than the off state (Column 7 Lines 17-27 and as modified in claim 8
`above, pulse width i.e. the on state of the DETC is 10-50 microseconds long and off state will be
`200ms ).
`
`Regarding claim 10, the combination of Schuermann in view of Charrat teaches the
`apparatus of claim 8 as discussed above. The combination further discloses that the measuring
`device stores a measuring value obtained (Charrat: Column 9 Lines 37-55).
`
`Regarding claim 11, Schuermann in view of Charrat and further in view of Nichols
`teaches the apparatus of claim 10 as discussed above. The combination further teaches the
`measuring device emits a control signal to the switching apparatus when a measuring value
`deviates from the average of the measuring values stored with the previous on phases (Charrat:
`Column 9 Lines 37-55)
`
`Regarding claim 12, Schuermann in view of Charrat teaches the apparatus of claim 8
`
`

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`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 7 of 19
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`AIRE-SAMS-00000279
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`Application/Control Number: 10/565,732
`Art Unit: 2612
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`Page 7
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`as discussed above. While the combination does not expressly disclose that when the intelligent
`device is switched on, the communication element is initially on and the measuring device off,
`this is an obvious matter ofdesign choice (the specification of the present application does not
`seem to give a reason for or an advantage to having this arrangement), which does not patentably
`distinguish the invention over the prior art.
`
`Regarding claim 15, Schuermann discloses a communication element designed to use a
`coil, which is part of a transmission oscillator, for automatically setting up a data connection
`with an intelligent device likewise having a communication element and a coil (see regarding
`claim 1 above). Schuermann does not disclose the method steps of:
`
`* monitoring a parameter of the transmission oscillator by means of a measuring device;
`
`* producing a control signal upon the occurrence of a change in the monitored property; and
`
`* switching on the communication element by a switching apparatus due in response to the
`control signal.
`
`However, the preceding limitations are known in the art of communications. Charrat
`discloses an RFID reader with an active standby mode comprising a measuring device for
`monitoring a property of the transmission oscillator which outputs a control signal when
`ascertaining a change of the monitored property (FIG. 3, 10 and Column 9 Lines 25-31, DETC3
`measures the amplitude of the envelope signal of the transmitter coil and Column 9 Lines 38-55;
`microprocessor monitors/compares the amplitude with the threshold and deduces the presence of
`a contactless integrated circuit and Column 4, Lines 43-47: variations higher than a determined
`variation threshold); and a switching apparatus which is connected to the measuring device and
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 8 of 19
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`AIRE-SAMS-00000280
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`Application/Control Number: 10/565,732
`Art Unit: 2612
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`Page 8
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`the communication element and which switches on the communication element when it has
`
`received a control signal from the measuring device (Column. 11, Lines 7-12: saving on the
`current consumption of a reader using the invention. Therefore, one can easily see that part of
`the communication circuits can be powered down/switched offby the microprocessor on standby
`mode since sending identification request from the reader and receiving identification message
`from the tag do not need to be performing during the standby mode).
`
`Therefore it would have been obvious to one ofordinary skill in the art at the time the
`invention was made to combine Schuermann with Charrat in order to send the identification
`
`request from the reader after the non-contact IC enters the proximity of the reader and therefore,
`prolongs battery life and/or saves energy of the reader (Charrat: Column 11 Lines 1-12).
`
`Claims 7 and 16 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`6.
`Schuermann in view of Charrat as applied to claim 1 above, and further in view of Watkins
`(U.S. Patent No. 6,317,027).
`
`Regarding claim 7, Schuermann in view of Charrat teaches the apparatus of claim 1 as
`discussed above. The combination does not teach that the measuring frequency of the measuring
`device is sweepable over a predetermined frequency domain.
`
`However, the preceding limitation is known in the art of communications. Watkins discloses an
`auto-tuning RFID reader, wherein a range of frequencies are scanned when searching for
`devices/transponders (Figure 2 and Column 3 Lines 44-62). Therefore it would have been
`obvious to one ofordinary skill in the art at the time of the invention to utilize the apparatus of
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 9 of 19
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`AIRE-SAMS-00000281
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`Application/Control Number: 10/565,732
`Art Unit: 2612
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`Page 9
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`Schuermann in view of Charrat with the addition ofsweeping over a frequency range as the
`motivation lies in Watkins that off-frequency tags/transponders can be more reliably detected
`(Column 2 Lines 13-23).
`
`Regarding claim 16, Schuermann in view of Charrat teaches the method of claim 16 as
`discussed above. The combination does not teach that the measuring frequency of the measuring
`unit is swept over a given frequency domain during the monitoring of the property.
`
`However, the preceding limitation is known in the art of communications. Watkins discloses an
`auto-tuning RFID reader, wherein a range of frequencies are scanned when searching for
`devices/transponders (Figure 2 and Column 3 Lines 44-62). Therefore it would have been
`obvious to one ofordinary skill in the art at the time of the invention to utilize the method of
`Schuermann in view of Charrat with the addition ofsweeping over a frequency range as the
`motivation lies in Watkins that off-frequency tags/transponders can be more reliably detected
`(Column 2 Lines 13-23).
`
`Claims 13 and 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`7.
`Schuermann in view of Charrat as applied to claim 1 above, and further in view of Flax] (U.S.
`Patent No. 5,491,715).
`
`Regarding claim 13, the combination of Schuermann in view of Charrat teaches the
`apparatus of claim 1 as discussed above. The combination does not disclose that the measuring
`device has a first oscillator device coupled at least temporarily with the coil for producingafirst
`oscillation signal, and a second oscillator device for producing a second oscillation signal.
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 10 of 19
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`AIRE-SAMS-00000282
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`Application/Control Number: 10/565,732
`Art Unit: 2612
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`Page 10
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`However, the preceding is known in the art of communications. Flaxl discloses an antenna
`tuning method and circuit, whereinafirst oscillator device (antenna resonance circuit 18) and a
`second oscillator device (osc/xmit circuitry 44) are fed into a phase comparator to perform
`adjustments to the device based on feedback (Figure 7 and Column 5 Line 33 - Column 4 Line
`6). It would have been obvious to one ofordinary skill in the art at the time the invention was
`made to combine the apparatus of Schuermann in view of Charrat with the circuit disclosed in
`Flax] as the phase comparison circuit in Flax] in addition to the change in magnitude in order to
`ascertain a change in the signal from the coil.
`
`Regarding claim 14, Schuermann in view of Charrat and further in view of Flax
`teaches the apparatus of claim 13 as discussed above. The combination further teaches producing
`the control signal for the switching apparatus on the basis of a phase relation between the first
`and second oscillation signals or signals derived therefrom (in Flaxl, the phase comparator 60
`outputs a signal to the control unit 50 which adjusts the antenna resonance circuit 18).
`
`Response to Arguments
`
`Applicant's arguments filed on October 10, 2009 have been fully considered but they are
`8.
`moot in view of new grounds of rejection.
`
`Conclusion
`
`The prior art made of record and not relied upon is considered pertinent to applicant's
`9.
`disclosure.
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 11 of 19
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`AIRE-SAMS-00000283
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`Application/Control Number: 10/565,732
`Art Unit: 2612
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`Page 11
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`Johnson (US 6476708) discloses a method is provided for operating an RF
`transponder system to detect the presence of an RFID device in the proximal space of an RF
`reader unit having an excitation signal generator circuit and an RFID device detection circuit.
`
`Contact Information
`Any inquiry concerning this communication or earlier communications from the
`examiner should be directed to Nay Tun whose telephone number is (571) 270-7939. The
`examiner can normally be reached on Mon-Thurs from 9:00-5:00.
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's Supervisor,
`Daniel Wu can be reached on (571) 272-2964. The fax phone number for the organization where
`this application or proceeding is assigned is 703-872-9306.
`Information regarding the status of
`an application may be obtained from the Patent Application Information Retrieval (PAIR)
`system. Status information for published applications may be obtained from either Private PAIR
`or Public PAIR. Status information for unpublished applications is available through Private
`PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov.
`Should you have questions on access to the Private PAIR system, contact the Electronic Business
`Center (EBC) at 866-217-9197 (toll-free).
`
`INAY TUN/
`
`/Daniel Wu/
`Supervisory Patent Examiner, Art Unit 2612
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 12 of 19
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`AIRE-SAMS-00000407
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`Application No.: 10/565,732
`Art Unit: 2612
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`6/13
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`REMARKS
`
`Reconsideration of the pending application is respectfully requested in view of the
`following observations.
`
`In the claims
`
`Claims 1, 15, and 17 have been amended.
`
`Claim 1 has been amended to recite the feature of a switching apparatus “switches on
`the communication element when it has received the control signal from the
`measuring device by connecting the communication element to an energy source.”
`Support for this amendatory language may be found at least in paragraphs [0036] and
`[0039]-[0041] and Fig 2.
`
`Claims 1 and 17 have been amended to clarify indefinite language identified in the
`Office Action.
`
`Claim 15 has been amended similarly to amended claim 1 and has also been amended
`to clarify indefinite language identified in the Office Action.
`
`No new matter is introduced by the amendment to the claims. Entry of the
`amendment to the claims is kindly requested.
`
`Rejection of the claims under 35 USC § 112, second paragraph
`
`Reconsideration of this amendment is kindly requested in view of the amendment to
`the claims 1, 15, and 17.
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 13 of 19
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`AIRE-SAMS-00000408
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`Application No.: 10/565,732
`Art Unit: 2612
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`7/13
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`In claims 1 and 17, “a control signal” in the claims has been changed to “the control
`signal.”
`
`In claim 15, the term “parameter” has been changed to “property” to make the
`language used consistent throughout the claims.
`
`It is submitted that the amendment to the claims makes the claims conform to 35 USC
`§ 112, second paragraph.
`
`Withdrawal of this rejection is kindly requested.
`
`Rejection of claims 1-6, 8-12, 15, and 17 under 35 USC 103(a) as being unpatentable
`over US patent 5,287,112 (Schuermann) in view of US patent 6,905.074 (Charrat)
`and US 2002/0149376 (Hafjner)
`
`Reconsideration of this rejection is respectfully requested, in view of the amendment
`to claims land 15, on the basis that the rejection fails to establish a primafacie case
`of obviousness with respect to claims 1.
`
`Amended claim 1 recites a communication apparatus for setting up a data connection
`between intelligent devices, comprising:
`a transmission oscillator for carrying out a contactless data exchange, said
`oscillator including a coil;
`a communication element which is connected to the coil and to a data
`processing component of an intelligent device and which emits search signals via the
`coil to receive a response from another intelligent device,
`a measuring device for monitoring a property of the transmission oscillator
`which outputs a control signal when ascertaining a change of the monitored property,
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 14 of 19
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`AIRE-SAMS-00000409
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`Application No.: 10/565,732
`Art Unit: 2612
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`8/13
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`the monitored property of the transmission oscillator includes the frequency or
`impedance of the transmission oscillator in resonance,
`and a switching apparatus which is connected to the measuring device and the
`communication element and which switches on the communication element when it
`has received the control signal from the measuring device by connecting the
`communication element to an energy source.
`
`It is submitted that the proposed combination of Schuermann, Charrat, and Haffner
`fails to disclose all of the features of amended claim 1.
`
`First, the cited references do not disclose a switching apparatus switching on the
`communication element when it has received the control signal from the measuring
`device by connecting the communication element to an energy source.
`
`Schuermann is directed to a transponder (10) which uses a control circuit (16) to
`control modulator (48) which opens and closes switch (50) to change the resonant
`frequency of the resonant circuit (28) by connecting and disconnecting capacitor (52)
`from ground (see col. 3, lines 27-36 and Fig. 1). Thus, Schuermann does not disclose
`a switching apparatus as required by amended claim 1.
`
`The rejection also acknowledges that Schuermann does not disclose a switching
`element which is connected to the measuring device and the communication element
`and switches on the communication element when it receives the control signal from
`the measuring device. Charrat is relied on for the disclosure of this feature.
`
`Charrat, however, does not cure the deficiencies of Schuermann. Charrat discloses a
`contactless integrated circuit reader having a power saving mode (see Title). More
`specifically, the reader of Charrat saves power by using magnetic field pulses which
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 15 of 19
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`AIRE-SAMS-00000410
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`Application No.: 10/565,732
`Art Unit: 2612
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`9/13
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`are much shorter than that of classical magnetic field bursts and spacing out the
`pulses at larger intervals (see col. 7, lines 25-30).
`
`The method ofsaving power used in Charrat is fundamentally different from the
`mechanism used in amended claim 1. Amended claim 1 requires a switch which
`physically connects and disconnects the energy source from the communication
`element (see also Fig. 2). In contrast, Charrat reduces power consumption by having
`the magnetic field operate for shorter periods of time and operate less frequently
`which results in the use of less current overall. Charrat does not explicitly show an
`energy source in Fig. 3 and only generally discloses that a reader (10) has an
`autonomous power supply system, such as a battery or a cell, or may be powered by
`hard wired power sources (see col. 11, lines 8-13). Charrat is silent as to the specific
`connection of circuit in the reader and the energy source. Therefore, Charrat does not
`disclose switching on a communication by connecting the element to an energy
`source as required by amended claim 1.
`
`Moreover, Charrat does not disclose the microprocessor cutting off power from
`certain circuits to conserve energy. Charrat reduces power usage through current and
`explicitly states so in disclosing that the described features “save on current
`consumption of a reader (10) having an autonomous power supply” using the method
`described above (see col. 11, lines 8-13). Further, Charrat describes the
`microprocessor as having various ports
`(see Fig. 3). None of these ports
`are shown or described as being used to issue a circuit power down
`command or to power downacircuit.
`
`As seen in Fig. 3, port
`links data to be transmitted (DT,) to the modulator
`circuit (MODC) of data sending circuit (30) (see col. 6, lines 29-38). Port
`is an
`input of the microprocessor (MP) for receiving data (DT,) sent from the contactless
`integrated circuit (5) (see col. 6, lines 65-67). Port (PT3) of the microprocessor
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 16 of 19
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`AIRE-SAMS-00000411
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`Application No.: 10/565,732
`Art Unit: 2612
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`10/13
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`receives input from the monitoring circuit (DETC), and ports (PT4-PTw) are used to
`output the amplitude value (DVREF) to the monitoring circuit (DETC) (see Fig. 3).
`
`Thus, Charrat discloses no functionality in the microprocessor (MP) which would
`allow the microprocessor to power down specific circuits in order to save power.
`
`Furthermore, Charrat does not disclose a measuring device which sends a control
`signal to the switching apparatus which, as a result ofreceiving the control signal,
`connects the communication element to an energy source. Charrat discloses three
`embodiments ofmonitoring circuit DETC which receives the envelope signal SE (see
`col. 7, line 65 — col. 8, line 2). DETC1 and DETC2 compare the envelope signal SE
`with VREF to determine whether or not a contactless integrated circuit is present (see
`Figs. 6-9B and col. 8, lines 22-35 and col. 8, line 63 — col. 9, line 20). DETC3
`“simply comprises an analog-to-digital converter ADC and the actual monitoring of
`the envelope pulses is here performed by the microprocessor MP. The converter ADC
`thus receives the envelope signal SE at input and delivers a digital amplitude value
`DSE that is applied to ports of the microprocessor” (see col. 9, lines 25-32).
`
`In summary, DETC1 and DETC2 perform a comparison between the envelope signal
`SE and VREF while DETC3 merely outputs the digitized envelope signal SE to the
`microprocessor and the microprocessor performs the comparison (see col. 9, lines 49-
`52). Using the DETC and the microprocessor, a reader becomes aware that a
`contactless integrated circuit is within communication range of the reader. Charrat
`does not disclose that once the reader becomes aware of the presence of a contactless
`integrated circuit, the reader connects the communication element to an energy
`source. Thus, Charrat fails to disclose a switching apparatus as required by amended
`claim 1 since Charrat does not disclose switching on the communication element by
`connecting the communication element to an energy source.
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 17 of 19
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`AIRE-SAMS-00000412
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`Application No.: 10/565,732
`Art Unit: 2612
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`11/13
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`Finally, Haffner fails to cure the shortcomings of Schuermann and Charrat. Haffner
`discloses a proximity sensor which senses the approach of an initiator or trigger (4)
`by the change of the impedance of the coil (L) or the capacitor (C) (see Fig. 1 and par.
`[0031]). Haffner does not disclose that as the result of a signal, a switching apparatus
`connects the communication element to an energy source.
`
`Therefore, the proposed combination of Schuermann, Charrat, and Haffner fails to
`establish a prima facie case of obviousness since none of the references taken
`together or alone disclose all of the features of amended claim 1.
`
`Amended claim 15 includes features similar to those of amended claim 1 and is
`likewise allowable for reasons similar to those given above.
`
`Claims 2-6, 8-12, and 17 depend from claim 1, and are therefore patentable as
`containing all of the recited features of claim 1, as well as for their respective recited
`features.
`
`Withdrawal of the rejection is kindly requested.
`
`Rejection of claims 7 and 16 under 35 USC 103(a) as being unpatentable over US
`patent 5,287,112 (Schuermann) in view of US patent 6,905,074 (Charrat), US
`2002/0149376 (Haffner), and US patent 6,317,027 (Watkins)
`
`Claims 7 and 16 depend from claim 1 or 15 and are therefore patentable as containing
`all of the recited features of claim 1 or 15, as well as for their respective recited
`features.
`
`Moreover, Watkins does not cure the deficiencies of Schuermann, Charrat, or Haffner
`since Watkins does not disclose a switching apparatus which switches on the
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 18 of 19
`
`AIRE-SAMS-00000413
`
`Application No.: 10/565,732
`Art Unit: 2612
`
`12/13
`
`communication element when it has received the control signal from the measuring
`device by connecting the communication element to an energy source.
`
`Accordingly, the proposed combination of Schuermann, Charrat, Haffner, and
`Watkins does not establish a primafacie case of obviousness with respect to claim 1
`or 15 from which claims 7 and 16 depend.
`
`Withdrawal of the rejection is kindly requested.
`
`Rejection of claims 13 and 14 under 35 USC 103(a) as being unpatentable over US
`patent 5,287,112 (Schuermann) in view of US patent 6,905,074 (Charrat), US
`2002/0149376 (Haffner), and US patent 5,491,715 (Flaxl)
`
`Claims 13 and 14 depend from claim 1 and are therefore patentable as containing all
`of the recited features of claim 1, as well as for their respective recited features.
`
`Moreover, Flaxl does not cure the deficiencies of Schuermann, Charrat, or Haffner
`since Flax/ does not disclose a switching apparatus which switches on the
`communication element when it has received the control signal from the measuring
`device by connecting the communication element to an energy source.
`
`Accordingly, the proposed combination of Schuermann, Charrat, Haffner, and Flaxl
`does not establish a primafacie case of obviousness with respect to claim 1 from
`which claims 13 and 14 depend.
`
`Withdrawal of the rejection is kindly requested.
`
`

`

`Case 6:21-cv-01101-ADA Document 31-5 Filed 05/19/22 Page 19 of 19
`
`AIRE-SAMS-00000414
`
`Application No.: 10/565,732
`Art Unit: 2612
`
`13/13
`
`Conclusion
`
`As a result of the amendment to the claims, and further in view of the foregoing
`remarks, it is respectfully submitted that the application is in condition for allowance.
`Accordingly, it is respectfully requested that every pending claim in the present
`application be allowed and the application be passed to issue.
`
`If any issues remain that may be resolved by a telephone or facsimile communication
`with the Applicant’s attorney, the examiner is invited to contact the undersigned at
`the numbers shown below.
`
`BACON & THOMAS, PLLC
`625 Slaters Lane, Fourth Floor
`Alexandria, Virginia 22314-1176
`Phone: (703) 683-0500
`Facsimile: (703) 683-1080
`
`Date: August 23, 2011
`
`Respectfully submitted,
`
`/Justin J. Cassell/
`
`JUSTIN J. CASSELL
`Attorney for Applicant
`Registration No. 46,205
`
`