Ex Parte Tasler

Patent Trial and Appeal BoardDec 21, 2012

11467073 (P.T.A.B. Dec. 21, 2012)

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. CONFIRMATION NO. 11/467,073 08/24/2006 Michael Tasler 0300757-34 3012 24628 7590 12/21/2012 Husch Blackwell LLP Husch Blackwell Sanders LLP Welsh & Katz 120 S RIVERSIDE PLAZA 22ND FLOOR CHICAGO, IL 60606 EXAMINER LEE, CHUN KUAN ART UNIT PAPER NUMBER 2181 MAIL DATE DELIVERY MODE 12/21/2012 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) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL TASLER ____________ Appeal 2011-001812 Application 11/467,073 Technology Center 2100 ____________ Before MARC S. HOFF, GREGORY J. GONSALVES, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001812 Application 11/467,073 2 Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 237-260, 262-268, 270-273, 275, 277, 279-304, 308-312, and 314-324. Claims 1-236, 325, and 326 have been cancelled, and claims 261, 269, 274, 276, 278, 305-307, and 313 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellant’s invention is directed to an interface device which provides fast data communication between a host device with input/output interfaces and a data transmit/receive device. See Spec. 26, Abstract of the Disclosure. Claim 237 is illustrative, with key disputed limitations emphasized: 237. An analog data generating and processing device (ADGPD), comprising: an input/output (i/o) port; a program memory; a data storage memory; a sensor designed to transmit data; a processor operatively interfaced with the i/o port, the program memory, the data storage memory and the sensor; wherein the processor is adapted to be involved in a data generation process by which the sensor generates analog data, the analog data is processed, and the processed analog data is Appeal 2011-001812 Application 11/467,073 3 stored in the data storage memory as at least one file of digitized analog data; wherein the processor also is adapted to be involved in an automatic recognition process in which, when the i/o port is operatively interfaced with a multi-purpose interface of a computer, the processor executes at least one instruction set stored in the program memory and thereby causes at least one parameter which provides identification information regarding the ADGPD to be automatically sent through the i/o port and to the multi-purpose interface of the computer (a) without requiring any end user to load any software onto the computer at any time, (b) without requiring any end user to interact with the computer to set up a file system in the ADGPD at any time, (c) before a time when the computer is able to receive the at least one file of digitized analog data from the data storage memory and (d) regardless of the identity of a manufacturer of the computer; and wherein the processor is further adapted to be involved in an automatic file transfer process in which, when the i/o port is operatively interfaced with the multi-purpose interface of the computer, and after the at least one parameter has been received by the multi-purpose interface of the computer, the processor executes at least one other instruction set stored in the program memory and thereby causes the at least one file of digitized analog data to be transferred to the computer regardless of the identity of the manufacturer of the computer and without requiring any user-loaded file transfer enabling software to be loaded on or installed in the computer at any time. The Examiner relies on the following as evidence of unpatentability: Robert Ristelhueber, “Plug and Play is Almost Here”, Electronic Business Buyer, Volume 20, number 5, May, 1994 (Hereinafter “Ristelhueber”). Endo US 4,652,928 Mar. 24, 1987 Roberts US 5,576,757 Nov. 19, 1996 Smith US 5,634,075 May 27, 1997 Appeal 2011-001812 Application 11/467,073 4 Shinohara US 5,742,934 Apr. 21, 1998 Kerigan US 5,948,091 Sep. 7, 1999 Hashimoto US 6,111,604 Aug. 29, 2000 THE REJECTIONS 1. The Examiner rejected claims 237-244, 246, 249-256, 258, 262- 268, 270-273, 275, 277, 279-302, 304, 308-312, and 314-324 under 35 U.S.C. §103(a) as unpatentable over Hashimoto, Smith, Kerigan, Ristelhueber, and Shinohara. Ans. 6-55.1 2. The Examiner rejected claims 245, 247, 248, 257, 259, and 260 under 35 U.S.C. §103(a) as unpatentable over Hashimoto, Smith, Kerigan, Ristelhueber, Shinohara, and Endo. Ans. 55-58. 3. The Examiner rejected claim 303 under 35 U.S.C. §103(a) as unpatentable over Hashimoto, Smith, Kerigan, Ristelhueber, Shinohara, and Roberts. Ans. 58-59. ISSUES Based upon our review of the record, the arguments proffered by Appellant and the findings of the Examiner, we find the following issues to be dispositive of the claims on appeal: 1. Under § 103, has the Examiner erred in rejecting all pending claims because none of the cited references disclose an “Analog Data Generating and Processing Device” (ADGPD) that causes a file of digitized analog data to be automatically transferred to a 1 Throughout this opinion, we refer to the Appeal Brief filed July 27, 2010; the Examiner’s Answer mailed September 30, 2010; and, the Reply Brief filed November 8, 2010. Appeal 2011-001812 Application 11/467,073 5 host computer without requiring any user-loaded file transfer enabling software regardless of the computer manufacturer? 2. Under § 103, has the Examiner erred in rejecting all pending claims because none of the cited references disclose a processor involved in an automatic recognition process in which the processor automatically sends identification to the host computer? 3. Under § 103, has the Examiner erred in rejecting all pending claims because none of the cited references disclose an automatic recognition process without requiring any end user to load software onto the computer, regardless of the manufacturer of the computer? 4. Under § 103, has the Examiner erred in rejecting all pending claims because none of the cited references disclose an automatic recognition process without requiring an end user to interact with the host computer to set up a file system in the ADGPD at any time regardless of the manufacturer. 5. Under § 103, has the Examiner erred in rejecting claims 283-285, 321, and 322 because none of the cited references disclose a processor in the peripheral device which causes a virtual boot sequence? 6. Under § 103, has the Examiner erred in rejecting claims 270, 283- 285, 321, 322, and 324 because none of the cited references disclose an analog acquisition device which identifies itself to a host computer as a hard disk drive? 7. Has the Examiner improperly combined the Smith and Hashimoto references? Appeal 2011-001812 Application 11/467,073 6 ANALYSIS Initially, we address Issue 2. Appellant argues that the cited combination of Hashimoto, Smith, Kerigan, Ristelhueber and Shinohara fail to teach or suggest a system and method in which a processor is involved in an automatic recognition process in which the processor automatically sends identification to the host computer. App. Br. 22-28. Specifically, Appellant argues that independent claims 237, 321, and 323 each recite a processor involved in an automatic recognition process in which the processor executes an instruction set causing a parameter which provides identification to be sent to a computer. Id. at 22-23. Appellant argues that Hashimoto, for example, merely discloses a system in which a connection to a host personal computer is detected and communication is then initiated. Id. Similarly, Appellant argues that in Smith, the host computer assigns a “handle” to a peripheral device, rather than having the peripheral device send an identification to the host computer. Id. at 25. The Examiner finds that Hashimoto must recognize the connected peripheral device, in order to know how to communicate with the connected peripheral device and that Smith teaches an automatic recognition process wherein a parameter “signifying that the peripheral device has the ability to communicate.” Ans. 8. The Examiner cites Hashimoto at Fig. 11-12; Fig. 14-15; col. 1, ll. 27 -57; col. 6, l. 16 to col. 9, l. 17; col. 9, l. 46 to col. 11, l. 42 and col. 12, l. 16 to col. 14, l. 14, and Smith, at Fig. 2-5; col. 1, ll. 9-22; col. 2, l. 40 to col. 3, l. 59; col. 4, ll. 5-34 and col. 6, ll. 63-62. Appeal 2011-001812 Application 11/467,073 7 We have carefully examined the cited portions of Hashimoto and Smith and fail to find a disclosure in either reference of a peripheral device that sends an identification parameter to a host computer. We find that Hashimoto discloses a camera peripheral device which detects a connection to a host computer and then transmits or receives image data dependent upon the state of a control switch. Similarly, Smith discloses the host computer assigns a “handle” to a peripheral device which has been detected. Consequently, we find the Examiner erred in rejecting claims 237- 244, 246, 249-256, 258, 262-268, 270-273, 275, 277, 279-302, 304, 308- 312, and 314-324, in that the cited references fail to show or suggest a peripheral processor which executes an instruction set causing identification information to be sent to a host processor, as set forth in independent claims 237, 321, and 323. Since we agree with at least one of the arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. It follows that Appellant has shown that the Examiner erred in concluding that the cited art renders claims 237-260, 262-268, 270-273, 275, 277, 279-304, 308-312, and 314-324 unpatentable. CONCLUSION The Examiner erred in rejecting claims 237-260, 262-268, 270-273, 275, 277, 279-304, 308-312, and 314-324 under § 103. Appeal 2011-001812 Application 11/467,073 8 ORDER The Examiner’s decision rejecting claims 237-260, 262-268, 270-273, 275, 277, 279-304, 308-312, and 314-324 is reversed. REVERSED Vsh