Bicameral LLC v. NXP USA, Inc. et al

Western District of Texas, txwd-6:2018-cv-00294

Exhibit Kheyfits Ex. 5

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3 Kheyfits Declaration Exhibit 5 Case 6:18-cv-00294-ADA Diancament 44-6 Filed 08/12/19 Page 2 of 13 UNITED STAIS DEPARTMENT OF COMMERCE Patent and Trademark Office Address: COMMISSIONER OF PATENTS AND TRADEMARKS Washington, D.C. 20231 DEPARTA UNITED AMERIC TES OF APPLICATION NO. | FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. 09/064,474 04/22/98 ROY TRA-040 7 EXAMINER LM01/0610 DAVID P GORDON 65 WOODS END ROAD STAMFORD CT 06905 WHITMORE.S. ART UNIT PAPER NUMBER DATE MAILED: 06/10/99 Please find below and/or attached an Office communication concerning this application or proceeding. Commissioner of Patents and Trademarks PTO-90C (Rev. 2/95) 1. File Copy BC_GEN_0000240 3 Application No. Applicant 09/064,474 Subhash et al. Notice of References Cited Examiner Group Art Unit Stacy Whitmore 2783 Page 1 of 1 U.S. PATENT DOCUMENTS DOCUMENT NO. DATE NAME CLASS SUBCLASS 12/5/95 Folwell 714 45 8/6/96/ 714 40 5,473,754 5,544,311 5,724,505 5,572,672 3/3/98 Harenberg Aggade Dewitt 714 1715/96 714 FOREIGN PATENT DOCUMENTS DOCUMENT NO. DATE COUNTRY NAME CLASS SUBCLASS zoa NON-PATENT DOCUMENTS DOCUMENT (Including Author, Title, Source, and Pertinent Pages) DATE U.S. Patent and Trademark Office PTO-892 (Rev. 9-95) Notice of References Cited Part of Paper No. BC_GEN_0000249 3) Oc & 1998 TRK OFFICE AUG INFORMATION DISCLOSURE ORATION 98 AUG || AMIO: 39 GRUP 2700 PAGE 1 OF 1 Atty Docket No. Serial-No. TRA-040 097064.4740 Applicant Subhash C. Roy et al. Filed Group April 22, 1998 2764 US PATENT DOCUMENTS Date Name Class Sub Filing date if class approp. 2/13/96 Somasundaram 385714 183.21 loli1194 4/30/96 Satagopan et al 3967144185.00 6/17199 Whitsel 395 500,19 Document No. Examiner Initials 5,491,793 5,513,346/ 5,640,542 Les 10,9193 500,49 145/96 FOREIGN PATENT DOCUMENTS Document No. Examiner Initials Date Country Class Sub- class Translation Yes No OTHER DOCUMENTS (Including Author, Title, Date, Pertinent Pages, Etc.) Motorola MPC 860 User's Manual, section 18, pp 20-32. EXAMINER to whose DATE CONSIDERED 6/1/99 DATE CONSIDERED BC_GEN_0000250 3 FORM PTO 968 (REV. 11-90 U.S. DEPARTMENT OF COMMERCE-Patent and Trademark Office Application No. NOTICE OF DRAFTPERSON'S PATENT DRAWING REVIEW 10:4422198. A The drawing filied (insert date) s not objected to by the Draftperson under 37 CFR 1.84 or 1.152. .::. i: B. objected to by the Draftperson under 37 CFR 1.84 or 1:152 as indicated below. The Examiner will require submission of new, corrected drawings who necessary. Corrected drawings must be submitted according to the instructions on the back of this notice..:. . 1: DRAWINGS. 37 CFR 1.84(a): Acceptable categories of drawings: ' ':*.-7. SECTIONAL VIEWS. 37 CFR 1.84(h/3) Black ink. Color. _ „Hatching not indicated for sectional portions of an object. -Color drawing are not acceptable until petition is granted. Fig.(s) Fig.(s) Sectional designation should be noted with Arabic or Pencil and non black ink is not permitted. Fig(s) Roman numbers. Fig.(s)__ 2. PHOTOGRAPHS. 37 CFR 1.84(6) 8. ARRANGEMENT OF VIEWS. 37 CFR 1.84(i) Photographs are not acceptable until petition is granted, - Words do not appear on a horizontal, left-lo-right fashion when - 3 full-tone sets are required. Fig(s) page is either upright or tumed, so that the top becomes the right Photographs not properly mounted (must brystol board or side, except for graphs. Fig.(s)_ photographic double-weight paper). Fig(s);..: Views not on the same plane on drawing sheet. Fig.(s) Poor quailty (half-tone). Fig(s) 9. SCALE. 37 CFR 1.84(k) 3. TYPE OF PAPER. 37 CFR 1.84(e) Scale not large enough to show. mechansiin without crowding: Paper not flexible, strong, white and durable. when drawing is reduced in size to two-thirds in reproduction. Fig.(s) ..' Fig.(s) Erasures, alterations, overwritings, interlineations, 10.CHARACTER OF LINES, NUMBERS, & LETTERS: 37 CFR:1.84(1) folds, copy machine marks not acceptable. (too thin): Lines, numbers & letters not uniforinly thick and well defined, Mylar, vellum paper is not acceptable (600 thin). clean, durable and black (poor line quality)..., Fig(s)_ Fig.(s)_ 2. 4. SIZE OF PAPER. 37 CFR 1.84(F): Acceptable sizes: 11. SHADING. 37 CFR 1.84(m).. .. . .., 21.0 cm by 29.7 cm (DIN size A4) - ... Solid black areas pale. Fig.(s)_ 21.6 cm by 27.9 cm (8 1/2 x 11 inches) -Solid black shading not permitted.: Fig(s)_""",.. All drawings sheets not the same size. -Shade lines, pale, rough and blurred. Fig.(s) Sheet(s)_ ... 2.NUMBERS, LETTERS, & REFERENCE CHARACTERS. 5. MARGINS. 37 CFR 18.4(g): Acceptable margins: 37 CFR 1.48(p)::: Top 2.5 cm Left 2.5 cm Right 1.5 cm Bottom 1.0 cm: Numbers and reference characters not plain and legible. si SIZE: A4 Size Fig.(s)__ . ..: . . Top 2.5 cm Left 2.5 cm Right 1.5 cm Bottom 1.0 cm Figure legends are poor. Fig.(s) – SIZE8 1/2 x 11 Numbers and reference characters not oriented in the same Margins not acceptable. Fig(s) - direction as the view. 37 CFR 1.84(p)(3) Fig.(s): 1 Top (T) L Left(L) Engligh alphabet not used. 37 CFR 1.84(p)(3) Fig.(s)_ Right (R)- Bottom (B) Numbers, letters and reference characters must be at least ... 6. VIEWS. CFR 1.84(h) REMINDER: Specification may require revision to .32 cm (1/8 inch) in height. 37 CFR 1.84(p)(3) Fig.(s)_1-2 1 o -13:LEAD LINES. 37 CFR 1.84(9) correspond to drawing changes. . Views connected by projection lines or lead lines. - Lead lines cross each other. Fig.(s) Fig.(s) ... Lead lines missing. Fig.(s) Partial views. 37 CFR 1.84(h)(2) 14. NUMBERING OF SHEETS OF DRAWINGS. 37 CFR 1.48(t) Brackets needed to show figure as one entity. _Sheets not numbered consecutively, and in Ababic numerals Fig.(s) beginning with number 1. Fig.(s). Views not labeled separately or properly. 15. NUMBERING OF VIEWS. 37 CFR 1.84(u) Fig.(s) _Views not numbered consecutively, and in Abrabic numerals, Enlarged view not labeled separately or properly. beginning with number 1. Fig.(s)_ Fig.(s). 16. CORRECTIONS. 37 CFR 1.84(w) Corrections not made from PTO-948 dated - 17. DESIGN DRAWINGS. 37 CFR 1.152 Surface shading shown not appropriate. Fig.(s). -Solid black shading not used for color contrast. Fig.(s) COMMENTS REVIEWER—_ADE _DATE5|2.198_TELEPHONE NO.(103)305 funt ATTACHMENT TO PAPER NO. PTO COPY libre BC_GEN_0000251 3 Office Action Summary Application No. Applicanis) 09/064,474 Subhash et al. Examiner Group Art Unit Stacy Whitmore 2783 | Responsive to communication(s) filed on Apr 22, 1998 O This action is FINAL. O Since this 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. A shortened statutory period for response to this action is set to expire 3 m onth(s), or thirty days, whichever. is longer, from the mailing date of this communication. Failure to respond within the period for response will cause the application to become abandoned. (35 U.S.C. § 133). Extensions of time may be obtained under the provisions of 37 CFR 1.136(a). is/are pending in the application. is/are withdrawn from consideration. Disposition of Claims Claim(s) 1-25 Of the above, claim(s) Claim(s) X Claim(s) 1-25 Claim(s) O Claims is/are allowed. is/are rejected. is/are objected to. are subject to restriction or election requirement. Application Papers See the attached Notice of Draftsperson's Patent Drawing Review, PTO-948. The drawing(s) filed on __is/are objected to by the Examiner. The proposed drawing correction, filed on is Capproved The specification is objected to by the Examiner. The oath or declaration is objected to by the Examiner. [disapproved. Priority under 35 U.S.C. § 119 Acknowledgement is made of a claim for foreign priority under 35 U.S.C. $ 119(a)-(d). O All O Some* None of the CERTIFIED copies of the priority documents have been received. received in Application No. (Series Code/Serial Number) I received in this national stage application from the International Bureau (PCT Rule 17.2(a)). * Certified copies not received: O Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e). 3 Attachment(s) X Notice of References Cited, PTO-892 X Information Disclosure Statement(s), PTO-1449, Paper No(s). __ Interview Summary, PTO-413 | Notice of Draftsperson's Patent Drawing Review, PTO-948 Notice of Informal Patent Application, PTO-152 --- SEE OFFICE ACTION ON THE FOLLOWING PAGES --- U.S. Patent and Trademark Office PTO-326 (Rev. 9-95) Office Action Summary Part of Paper No. 4 BC_GEN_0000241 3 Serial Number: 09/064,474 Art Unit: 2783 Page 2 DETAILED ACTION 1. Claims 1-25 are presented for examination. 2. The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The current title is imprecise. 3. It is noted that the present application does not contain line numbers in the specification of claims, and does not correspond to the preferred format. The preferred format is to number each line of every claim, with each claim beginning with line 1. For ease of reference by both the Examiner and Applicant all future correspondence should include the recommended numbering. Claim Rejections - 35 U.S.C. § 103 4. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. BC GEN 0000242 3 Serial Number: 09/064,474 Art Unit: 2783 Page 3 5. Claims 1-25 are rejected under 35 U.S.C. 103(a) as being unpatentable over Folwell et al. (5,473,754) in view of 6. As for claim 1, Folwell et al. taught the invention substantially as claimed, including a processor having a real time debugging interface (abstract), comprising: a) instruction memory means (fig. 2 element 21), b) program counter means (col. 5 lines 4-5), c) cause register means for indicating information regarding interrupts and exceptions (col. 5 lines 1-10, and Table 4), and d) first decoder means for indicating information about an instruction executed by the processor during a clock cycle (fig. 2 element 22), the first decoder coupled to the instruction memory, the program counter and the cause register, where the first decoder has a first output providing information regarding activity of the processor (fig. 2 elements 24 and 26, col. 1 lines 62-67, col. 2 lines 1-4). Folwell et al. does not specifically teach the decoder operating in real time. However, Folwell et al. Did disclose the decoder operating directly with instruction BC_GEN_0000243 3 Serial Number: 09/064,474 Art Unit: 2783 Page 4 flow and the debug port, both of which operate in real time. It would have been obvious for one of ordinary skill in the art at the time the invention was made that Folwell et al.'s decoder operates in real time because it is part of normal program operation which operates in real time. 7. As for claim 11, Folwell et al. taught the invention substantially as claimed, including the limitations as cited in claim 1. Folwell et al. Did not specifically disclose plural elements within an embedded system. However, Folwell et al. disclosed his debug device coupled to a host work station via a SCSI bus (fig. 1). It would have been obvious to one of ordinary skill in the art at the time the invention was made to incorporate a plurality of elements in an embedded system into Folwell et al.'s system because Folwell et al.'s system was expandable via the SCSI. 8. As for claim 21, Folwell et al. taught a method of debugging a processor comprising: a) providing information about processor activity in real time (abstract), and b) associating the instructions executed by the processor with information about processor activity (col. 5 lines 52-53). 9. As for claims 2, 12, and 24, Folwell et al. taught the information about processor activity includes information as to at least one of a jump instruction has BC_GEN_0000244 3 Serial Number: 09/064,474 Art Unit: 2783 Page 5 been executed (col. 2 table 3), a jump instruction based on the contents of a register has been executed (col. 2 table 3), a branch has been taken (col. 2 table 2), and an exception has been encountered (col. 5 table 4). 10. As for claims 3, 13 and 22, Folwell et al. taught the clock cycle is a processor clock cycle (col. 1 lines 34-36), and the first decoder updates the information about each instruction executed by the processor for each of the processor clock cycles (col. 1 lines 5-9, and 34-36). 11. As for claims 4, 14 and 23, Folwell et al. taught the information about each instruction executed by the processor includes an indication whether or not an instruction has been executed since a previous processor cycle (col. 1 line 62 - col. 2 line 4). 12. As for claims 5 and 15, Folwell et al. did not specifically teach the first output is a three bit parallel output. However, Folwell et al. disclosed a parallel output of more than three bits (fig. 2 elements 24 and 26). It would have been obvious to one of ordinary skill in the art at the time the invention was made that Folwell et al.'s performed the same function as claimed by applicant because Folwell et al.'s parallel output included at least three bits of information and could have been designed to use three bits as an output. BC_GEN_0000245 3 Serial Number: 09/064,474 Art Unit: 2783 Page 6 13. As for claims 6 and 16, Folwell et al. did not expressly teach e) second decoder means, and f) event history buffer means as coupled together as claimed by applicant. However, Folwell et al. disclosed e) a second decoder means coupled to the cause register for indicating information about the contents of cause registers, and having a second output, and enables the event history buffer to capture contents of the cause register when a particular event is indicated. (col. 5 lines 8-27, and col. 7 line 60 - col. 8 lines 11) f) event history buffer means for storing information regarding processor events (col. 5 lines 8-27). It would have been obvious to one of ordinary skill in the art at the time the invention was made that although Folwell et al.'s system was not coupled exactly as claimed, it performed the same function as applicant's claimed limitations. 14. As for claims 7, 17 and 25, Folwell et al. disclosed the second decoder means enables the event history buffer means when the cause register means indicate an event of a change in status of an interrupt line, internal processor exception, or a BC_GEN_0000246 3 Page 7 Serial Number: 09/064,474 Art Unit: 2783 jump based on the contents of a register (col. 1 line 64 - col. 2 line 3, and col. 8 lines 1 - 9). 15. As for claims 8 and 18, Folwell et al. did not specifically teach the event history buffer is a bit serial output. However, Folwell et al. disclosed the output FIFO (col. 8 line 9), which could be configured to have a serial output. 16. As for claims 9 and 19, Folwell et al. disclosed the processor is on a chip having a plurality of pins (col. 1 lines 5-9), and the first output and data output are provided via some of the pins (fig. 1 element 25 and fig. 2 element 26). 17. As for claims 10 and 20, Folwell et al. disclosed the first output is an n-bit parallel output (fig. 2 element 26), and the data output is a serial output (see as cited in paragraph 15). 18. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Harenberg et al. 5,544,311 debug port, real-time Argade et al. 5,724,505 debug host, real-time Dewitt et al. 5,572,672 monitor in real-time 19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to examiner Stacy Whitmore, whose telephone BC_GEN_0000247 3 Page 8 Serial Number: 09/064,474 Art Unit: 2783 number is (703) 305-0565. The examiner can normally be reached on Monday- Thursday and alternate Fridays from 6:30AM - 4:00PM. If attempts to reach the examiner by telephone are unsuccessful, the. examiner's supervisor, Meng Ai T. An, can be reached on (703) 305-9678. Any inquiry of a general nature or relating to the status of this application should be directed to the Group receptionist whose telephone number is (703) 305- 3900. Matro Stacy Whitmore Jun 3, 1999 Meng-Ai T. An Supervisory Patent Examiner Technology Center 2700 BC_GEN_0000248