Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 1 of 13
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`Exhibit 3
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`

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`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 2 of 13
`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 2 of 13
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
` FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONFIRMATIONNO.
`
`10/565,732
`
`06/30/2006
`
`Klaus Finkenzeller
`
`FINK3001/JJC/PMB
`
`1969
`
`23364
`
`7590
`
`01/05/2010
`
`BACON & THOMAS, PLLC
`625 SLATERS LANE
`FOURTH FLOOR
`ALEXANDRIA, VA 22314-1176
`
`TUN, NAY L
`
`2612
`
`MAIL DATE
`
`01/05/2010
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 3 of 13
`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 3 of 13
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`Application No.
`Applicant(s)
`
`Office Action Summary
`
`10/565,732
`Examiner
`
`FINKENZELLER, KLAUS
`Art Unit
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a).
`In no event, however, may a reply be timelyfiled
`after SIX (6) MONTHSfrom the mailing date of this communication.
`If NO period forreply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for replywill, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three monthsafter the mailing date of this communication, even if timely filed, may reduce any
`eamed patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)X] Responsive to communication(s) filed on 10/09/2009.
`2a)L] This action is FINAL.
`2b)X] This action is non-final.
`3)L] Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)X] Claim(s) 1-16 is/are pending in the application.
`
`4a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`5)L] Claim(s)
`is/are allowed.
`6)X] Claim(s) 1-76 is/are rejected.
`7)L] Claim(s)__ is/are objectedto.
`8)L] Claim(s)____ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)X] The specification is objected to by the Examiner.
`10)X] The drawing(s) filed on 10/09/2009is/are: a)X] accepted or b)[_] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`11)] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)L] Acknowledgmentis made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or(f).
`a)LJAll b)L_] Some*c)L] Noneof:
`
`1.L] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copies ofthe certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action foralist of the certified copies not received.
`
`Attachment(s)
`4) C] Interview Summary (PTO-413)
`1) Xx] Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date. __
`2) [J Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`5) L] Noticeof Informal Patent Application
`3) [J Information Disclosure Statement(s) (PTO/SB/08)
`
`6) C] Other: U.S. Patent and Trademark OfficePaper No(s)/Mail Date_
`
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20091230
`
`

`

`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 4 of 13
`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 4 of 13
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`Application/Control Number: 10/565,732
`Art Unit: 2612
`
`Page 2
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`DETAILED ACTION
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`Claims status
`
`1.
`
`In the amendmentfiled on October 10, 2009, claim 1 has been amended. Therefore,
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`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
`
`3.
`
`The substitute specification filed 10 June 2009 has NOT been entered becauseit does not
`
`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 showingall the changesrelative 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 shownby strike-through except that
`
`double brackets placed before and after the deleted characters may be used to show deletion of
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`five or fewer consecutive characters. The text of any deleted subject matter must be shown by
`
`being placed within double brackets if strike-through cannotbe easily perceived. An
`
`accompanying clean version (without markings) and a statementthat the substitute specification
`
`contains no new matter must also be supplied. Numbering the paragraphsofthe specification of
`
`record is not considered a change that must be shown.
`
`

`

`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 5 of 13
`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 5 of 13
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`Application/Control Number: 10/565,732
`Art Unit: 2612
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`Page 3
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`Drawings
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`4.
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`Objections to drawings from previousoffice action are withdrawn andsubstitute
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`drawingsfiled on 10/09/2009 are entered.
`
`Claim Rejections - 35 USC § 103
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`5.
`
`Claims 1-6, 8-12 and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Schuermann(U.S. Patent No. 5,287,112) in view of Charratetal. (hereinafter "Charrat"-
`
`U.S. Patent No. 6,905,074).
`
`Regarding claim 1, Schuermanndiscloses a communication apparatusfor setting up a
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`data connection between intelligent devices, comprising:
`
`* a transmission oscillator (resonant circuit 28) for carrying out a contactless data exchange, said
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`oscillator including a coil (Column 4 Lines 42-44 and 50-52 );
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`* a communication element (control circuit 16) which is connected to the coil and the data
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`processing componentofan intelligent device and which emits search signals via the coil to
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`receive a response from anotherintelligent device (Column 3 Lines 46-54);
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`Schuermanndoesnotdisclose:
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`* a measuring device for monitoring a property of the transmission oscillator which outputs a
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`control signal when ascertaining a change of the monitored property; and
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`* a switching apparatus which is connected to the measuring device and the communication
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`element and which switches on the communication element whenit has received a control signal
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`from the measuring device.
`
`

`

`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 6 of 13
`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 6 of 13
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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
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`discloses an RFID reader with an active standby mode comprising a measuring device for
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`monitoring a property of the transmission oscillator which outputs a control signal when
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`ascertaining a change of the monitored property (FIG. 3, 10 and Column 9 Lines 25-31, DETC3
`
`measures the amplitude of the envelopesignal of the transmitter coil and Column 9 Lines 38-55;
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`microprocessor compares the amplitude with the threshold and deducesthe 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
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`the communication element and which switches on the communication element whenit 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 off by the microprocessor on standby
`
`modesince sendingidentification 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 obviousto one ofordinary skill in the art at the time the
`
`invention was made to combine Schuermannwith Charratin order to send the identification
`
`request from the reader after the non-contact IC enters the proximity of the reader and therefore,
`
`prolongsbattery life and/or saves energy of the reader (Charrat: Column 11 Lines 1-12).
`
`Regarding claim 2, Schuermann in view of Charratteaches the apparatus of claim 1 as
`
`discussed above. Schuermannfurther discloses an assembly that is switchable to the
`
`transmission oscillator via a switch (the tuning circuit consisting of capacitor 56 and resistor 58
`
`connects to resonantcircuit 34 via switch 54 to form new resonantcircuit 60), said assembly
`
`

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`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 7 of 13
`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 7 of 13
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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 ofthe oscillating circuit (Column 5 Lines 47-59; one of
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`ordinary skill in the art could combinethis arrangement from the transponder with the
`
`interrogator since it is knownin 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. Schuermannfurther discloses that the assembly is a resistive element(the
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`tuning circuit is a resistive element since it comprisesa resistor).
`
`Regarding claim 4, Schuermann in view of Charrat teaches the apparatus of claim 1 as
`
`discussed above. Schuermannfurther discloses including an assembly (capacitor 52) switchable
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`to the transmission oscillator via a switch (switch 50), said assembly causing a changein the
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`resonant frequency ofthe transmission oscillator (Column 5 Lines 13-19).
`
`Regarding claim 5, Schuermann in view of Charrat teaches the apparatus of claim 4 as
`
`discussed above. Schuermannfurther discloses that the assembly causes a reduction in the
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`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. Schuermannin view of Charrat does not explicitly disclose the switching
`
`apparatus hasa time controller for cyclically switching the measuring device on andoff.
`
`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 34-3 Filed 06/09/22 Page 8 of 13
`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 8 of 13
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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 DETCcircuit does not need to measure the amplitude
`
`between the pulses, one can easily see that it can be switched off for 200msafter detection of
`
`each pulse and switched on cyclically.
`
`Therefore, it would have been obviousto 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 andoff 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 Charratteaches the apparatus of claim 8 as
`
`discussed above. Charrat further discloses that the time controller keeps the onstate 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 microsecondslong andoff state will be
`
`200ms).
`
`Regarding claim 10, the combination of Schuermannin view of Charrat teaches the
`
`apparatus of claim 8 as discussed above. The combination further discloses that the measuring
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`device stores a measuring value obtained (Charrat: Column 9 Lines 37-55).
`
`Regarding claim 11, Schuermannin view of Charrat and further in view of Nichols
`
`teaches the apparatus of claim 10 as discussed above. The combination further teaches the
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`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, Schuermannin view of Charrat teaches the apparatus of claim 8
`
`

`

`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 9 of 13
`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 9 of 13
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`Application/Control Number: 10/565,732
`Art Unit: 2612
`
`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 elementis initially on and the measuring deviceoff,
`
`this is an obvious matter of design choice (the specification of the present application does not
`
`seem to give a reason for or an advantage to having this arrangement), which doesnot patentably
`
`distinguish the invention overthepriorart.
`
`Regarding claim 15, Schuermanndiscloses a communication element designed to use a
`
`coil, whichis part of a transmission oscillator, for automatically setting up a data connection
`
`with an intelligent device likewise having a communication elementand a coil (see regarding
`
`claim 1 above). Schuermanndoesnot disclose the method stepsof:
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`* monitoring a parameter of the transmission oscillator by means of a measuring device;
`
`* producing a control signal upon the occurrenceof a change in the monitored property; and
`
`* switching on the communication element by a switching apparatus due in responseto the
`
`control signal.
`
`However, the preceding limitations are knownin 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 envelopesignal of the transmitter coil and Column 9 Lines 38-55;
`
`microprocessor monitors/compares the amplitude with the threshold and deducesthe 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 34-3 Filed 06/09/22 Page 10 of 13
`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 10 of 13
`
`Application/Control Number: 10/565,732
`Art Unit: 2612
`
`Page 8
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`the communication element and which switches on the communication element whenit 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 off by the microprocessor on standby
`
`modesince sendingidentification 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 obviousto one ofordinary skill in the art at the time the
`
`invention was made to combine Schuermannwith Charratin order to send the identification
`
`request from the reader after the non-contact IC enters the proximity of the reader and therefore,
`
`prolongsbattery life and/or saves energy of the reader (Charrat: Column 11 Lines 1-12).
`
`6.
`
`Claims 7 and 16 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Schuermannin view of Charratas 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. Watkinsdiscloses 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
`
`obviousto one of ordinary skill in the art at the time of the invention to utilize the apparatus of
`
`

`

`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 11 of 13
`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 11 of 13
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`Application/Control Number: 10/565,732
`Art Unit: 2612
`
`Page 9
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`Schuermannin view of Charrat with the addition of sweeping over a frequency range as the
`
`motivation lies in Watkinsthat off-frequency tags/transponders can be morereliably detected
`
`(Column 2 Lines 13-23).
`
`Regarding claim 16, Schuermannin 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. Watkinsdiscloses 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
`
`obviousto one of ordinary skill in the art at the time of the invention to utilize the method of
`
`Schuermannin view of Charrat with the addition of sweeping over a frequency range as the
`
`motivation lies in Watkinsthat off-frequency tags/transponders can be morereliably detected
`
`(Column 2 Lines 13-23).
`
`7.
`
`Claims 13 and 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Schuermannin view of Charratas applied to claim 1 above, and further in view of Flax] (U.S.
`
`Patent No. 5,491,715).
`
`Regarding claim 13, the combination of Schuermannin view of Charrat teaches the
`
`apparatus of claim 1 as discussed above. The combination does not disclose that the measuring
`
`device hasa first oscillator device coupled at least temporarily with the coil for producinga first
`
`oscillation signal, and a second oscillator device for producing a secondoscillation signal.
`
`

`

`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 12 of 13
`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 12 of 13
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`Application/Control Number: 10/565,732
`Art Unit: 2612
`
`Page 10
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`However, the preceding is knownin the art of communications. Flax] discloses an antenna
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`tuning methodandcircuit, wherein a first oscillator device (antenna resonancecircuit 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 obviousto one of ordinary skill in the art at the time the invention was
`
`made to combine the apparatus of Schuermannin view of Charrat with the circuit disclosed in
`
`Flax] as the phase comparison circuit in Flaxl in addition to the change in magnitudein order to
`
`ascertain a changein the signal from thecoil.
`
`Regarding claim 14, Schuermann in view of Charratand further in view of Flaxl
`
`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 secondoscillation signals or signals derived therefrom (in Flaxl, the phase comparator 60
`
`outputs a signal to the control unit 50 which adjusts the antenna resonancecircuit 18).
`
`Response to Arguments
`
`8.
`
`Applicant's arguments filed on October 10, 2009 have been fully considered but they are
`
`moot in view of new groundsofrejection.
`
`Conclusion
`
`9.
`
`The prior art made of record and notrelied upon is considered pertinent to applicant's
`
`disclosure.
`
`

`

`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 13 of 13
`Case 6:21-cv-01101-ADA Document 34-3 Filed 06/09/22 Page 13 of 13
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`Application/Control Number: 10/565,732
`Art Unit: 2612
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`Page 11
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`°
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`Johnson (US 6476708) discloses a method is provided for operating an RF
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`transponder system to detect the presence of an RFID device in the proximal space of an RF
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`reader unit having an excitation signal generator circuit and an RFID device detection circuit.
`
`Contact Information
`
`10.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Nay Tun whose telephone numberis (571) 270-7939. The
`
`examiner can normally be reached on Mon-Thurs from 9:00-5:00.
`
`If attempts to reach the examiner by telephoneare unsuccessful, the examiner's Supervisor,
`
`Daniel Wu can be reached on (571) 272-2964. The fax phone numberfor 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 applicationsis 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).
`
`/NAY TUN/
`
`/Daniel Wu/
`Supervisory Patent Examiner, Art Unit 2612
`
`