`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMlVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
`
`
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`15/428,277
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`02/09/2017
`
`Hideaki YAMASHITA
`
`PANDP0195US
`
`1032
`
`0430/2018 —MARK D. SARALINO (PAN) m
`7590
`51921
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`WANG, HARRY Z
`1621 EUCLID AVENUE
`19TH FLOOR
`
`PAPER NUMBER
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`CLEVELAND, OH 44115
`
`2185
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`NOTIFICATION DATE
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`DELIVERY MODE
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`04/20/2018
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`ELECTRONIC
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`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.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ipdocket @rennerott0.c0m
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`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 15/428,277 YAMASHITA ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`HARRY WANG $2213 2185
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
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`Status
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`1)IZI Responsive to communication(s) filed on 02/09/2017.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) L6is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1-6is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`I/'/\WIIW.USOI.O. ovI’ atentS/init events/
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`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
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`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 02/09/2017is/are: a)IXI accepted or b)|:l 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).
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`Priority under 35 U.S.C. § 119
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`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)I:l All
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`b)|:l Some” c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`
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`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 02/09/2017.
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180404
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`

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`Application/Control Number: 15/428,277
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`Page 2
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`Art Unit: 2185
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Information Disclosure Statement
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`2.
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`The information disclosure statement (IDS) submitted on 02/09/2017 is in
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`compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure
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`statement is being considered by the examiner.
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`Claim Objections
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`3.
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`Claim 5 objected to under 37 CFR 1.75(c) as being in improper form because a
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`multiple dependent claim dependent on claims 1 and 4. See MPEP § 608.01 (n). For
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`the purposes of examination this claim will be interpreted as " Ari informattcn processing
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`apparatus comprising: a hcst device having an Ehter’r‘ace; the adapter according tc ciaim
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`4. which is cehnected tc the host device via the interface; and the reccrdthg medium
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`acccr‘ding tc claim 4."
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`

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`Application/Control Number: 15/428,277
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`Page 3
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`Art Unit: 2185
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`Claim Rejections - 35 USC § 102
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`4.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or otherwise available to the public before the effective filing date of the claimed
`invention.
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`5.
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`Claims 1 & 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
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`Cohen (US 2013/0297894).
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`6.
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`Regarding claim 1, Cohen teaches a recording medium (Fig. 1B, 116,
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`Recording medium card) which is connectable to a digital device (Fig. 1B, 102, Host),
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`the recording medium comprising: a local bus (Fig. 1B, 116, Local bus 110/180) having
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`a plurality of switches or bridges (Fig. 1B, 103, Switch, 110, Bridges); a plurality of
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`recording units connected to the local bus (Fig. 1B, 199, NVM recording units); an
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`information storage unit (Fig. 1B, 141, Map) which stores information indicating a bus
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`configuration of the local bus (Paragraph 1100, Map 141 converts between data
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`addressing used on External Interfaces 110 and data addressing used on Device
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`Interfaces 190, using Table 143 to map external data addresses to locations in
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`NVM 199); and a communication unit for transferring the information to and from the
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`digital device (Fig. 1B, 104, Intermediate I/F), wherein, after the recording medium is
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`inserted into the digital device (Fig. 10, 1001 A, Initialize), the bus configuration of the
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`

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`Application/Control Number: 15/428,277
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`Page 4
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`Art Unit: 2185
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`local bus is reconstructed based on the information indicating the bus configuration
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`acquired from the information storage unit via the communication unit by the digital
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`device (Fig. 10, 1031, Update shadow map; Paragraph 0328, sending the update to
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`the shadow copy of the map from the HO device to the HO space memory of the
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`computing host).
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`7.
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`Regarding claim 2, Cohen teaches the recording medium of claim 1. Cohen
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`further teaches wherein the local bus is a PCI bus or a PCIe bus (Paragraph 0029, the
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`coupling is via one or more host interfaces including PCle).
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`Claim Rejections - 35 USC § 103
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`8.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior art are such that the claimed invention as a whole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
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`9.
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`Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Cohen (US
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`2013/0297894) in view of Hess (US 2012/0265912).
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`

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`Application/Control Number: 15/428,277
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`Page 5
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`Art Unit: 2185
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`Regarding claim 3, Cohen teaches the recording medium of claim 2. Cohen does
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`not teach wherein the communication unit is a sideband bus different from the PCI bus
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`or the PCle bus.
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`Hess teaches wherein the communication unit is a sideband bus (Fig. 2, Out-of-
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`band control path; 291, 293, SCL/SDA sideband) different from the PCI bus or the
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`PCle bus (Fig. 2, 295, PCle bus).
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`It would have been obvious to one of ordinary skill in the art before date of
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`application filing to have modified the recording medium to incorporate the teachings of
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`Hess and include an out-of-band control path channel in order to configure the bus/card
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`configurations of the recording medium card of Cohen.
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`One of ordinary skill in the art would be motivated to make these modifications in
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`order to prevent the transfer of configuration data over an improperly configured bus
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`(See Hess: Paragraph 0025, until the functional path conductors are configured
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`and initialized correctly, the functional path conductors may not be sufficient to
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`carry the functional path signals) thus reducing the possibility of errors occurring in
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`the data (See Hess: Paragraph 0042).
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`10.
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`Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Cohen
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`(US 2013/0297894) in view Of Freimuth (US 2008/0147904).
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`11.
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`Regarding claim 4, Cohen teaches an adapter (Fig. 1B, 107) in which a
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`recording medium is inserted and removed (Fig. 1B, 116, Recording medium card),
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`Application/Control Number: 15/428,277
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`Page 6
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`Art Unit: 2185
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`the recerding medium inciuding a iecai hes (Fig. 1B, 116, Local bus 110/180) having a
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`ciuraiity ct switches er bridges (Fig. 1B, 103, Switch, 110, Bridges) and an interrnetien
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`stcrage unit which steres in’r‘cnnaticn indicating a has ccn’r‘iguretich cf the iecai hue
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`(Paragraph 1100, Map 141 converts between data addressing used on External
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`Interfaces 110 and data addressing used on Device Interfaces 190, using Table
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`143 to map external data addresses to locations in NVM 199), the adapter
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`ccihcrieing: an in’r'cnnaticn acquisition unit tcr acquiring the inicrinatien indicating the
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`bus centiguratien trcrn the iritenhatieri sterage unit (Fig. “ER, 188, Shadew rnege)”
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`wherein, after insertien hi the reccrding medium is detected by the insertien/rerncvei
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`detectei‘ (Fig. “iii? ‘ttiti‘i A), the bus searcher sets a subcrdinate bus number ct each at
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`the eiureiihi ct switches er bridges based en the intermaticn indicating the bus
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`centiguretien acquired by the intermatieh aceuisitien unit, and then tecenstructs the hue
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`centigurstien (Fig. it}? 13331, tiedete thee).
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`Cohen teaches a PCIe l/O card with multiple recording units within that transmits
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`a map of the local bus configurations to the host device. Cohen does not explicitly teach
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`the adapter cemerising: a bus searcher fer setting a hue number from a rect hue fer
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`each cf the ciuraiity ct switches or bridges tc censtruct a bus centigureticn; an
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`insei‘tien/ren’ievai detectcr icr detecting inserticn and rernevei ct the reccrding medium
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`tc and trern the adapter; and an inicrmaticn acquisitich unit tcr acquiring the intermeticn
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`indicating the hits cehiiguretien trcrn the interniatieh sterege unit, wherein, etter
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`insertien cf the recerding medium is detected by the insertieni’remcvei detectcr, the bus
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`searcher sets a suhei‘dihate bus number ei each ct the piuraiity ei switches er bridges
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`

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`Application/Control Number: 15/428,277
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`Page 7
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`Art Unit: 2185
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`based en the inierrnatien indicating the bits cehiigtiratien acquired by the iniermatieri
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`acetiieitien unit
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`Freimuth teaches an adapter (Fig, 8, 832, iiiiiiiwtifititii; 834, PCi reet eembiex),
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`the adapter eernerising: a bite searcher for eetting at but; ritirnber irern e roet bus for
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`each ei the piuraiity ef switehes er br‘iciges to censtruet a bus ceniigtiratien (Fig 8, 832,
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`hiti‘twittfiiitii}; an insertien/remevai detecter fer detecting ineertien and remevai bi the
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`recording medium te and item the adapter (Fig. 3, 332, iiiifiuii‘fiitti‘t; Paregrabh {32%,
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`the eberatien sterte by reeeivihg, in a MR—Pfiii’v‘ii an "Add" event irttiieetirig the
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`adtfiiiifii‘t et a bemgeheht tea the Pfiie tabrie (eteb 2633i); arid an intermatien
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`acetiieitibn tinit fer acquiring the interntatibn indicating the bus benfigtiratien trem the
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`informatien sterege unit (Fig. 8, 832, trifiwii‘fiittit; Fig. 2b,, 2523, Gather characteristic
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`intermetieht wherein, after ineertien of the recerding medium ie detected by the
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`ineertien/rernovai detecter (Fig 263 261%, Reeeive eriei event), the bite Searcher sets a
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`subbrdinate bus number bi each at the pitireiity bi switches er bridges based en the
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`irtierrnetien indicating the bus eeniiguratiert acquired by the inierrnetien acquisitien unit
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`(Fig. 26, fififibi’m‘i‘b, Set gerte; Fig, "t8, Ease addresses).
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`It would have been obvious to one of ordinary skill in the art before date of
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`application filing to have modified the recording medium to incorporate the teachings of
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`Freimuth and include a hot-plug detection circuitry to detect adding/removal of the
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`device; an adapter connected to a host root bus and retrieve characteristic bus
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`information (Paragraph 0191, The MR-PCIM 2562 maintains a fabric configuration
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`data structure 2566 which stores characteristic information) from the information
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`Application/Control Number: 15/428,277
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`Page 8
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`Art Unit: 2185
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`storage units of Cohen, and allocating the bus numbers based on the characteristic bus
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`information provided.
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`One of ordinary skill in the art would be motivated to make these modifications
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`because Cohen discloses a mapping information storage module (See Cohen: Fig. 1B,
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`141) used for translating data between different bus interfaces which is synonymous
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`and related to the characteristic information of the bus system of Freimuth (See
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`Freimuth: Paragraph 0210, The MR-PCIM gathers characteristic information for
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`the added component (step 2620)), thus it would have been obvious to make the
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`modifications to yield the obvious result of being able to hot-plug devices in to configure
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`them quickly (See Freimuth: Paragraph 0209) and allow the use of the characteristic
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`information to determine the bus numbers thus allowing migration of bus settings to
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`enable efficient environments (See Freimuth: Paragraph 0020).
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`12.
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`Regarding claim 5, Cohen in view of Freimuth teaches adapter & recording
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`medium of claim 4. Cohen further teaches an information processing apparatus
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`comprising: a host device having an interface (Fig. 1B, 102, Host; Paragraph 0066,
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`using a PCle-based host protocol, such as NVM Express, the updated information
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`is communicated at least in part by the HO device writing a region in the memory
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`of the computing host and informing the computing host with an interrupt; i.e.
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`PCle internal interface); the adapter (Fig. 1B, 107) which is connected to the host
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`device via the interface (Paragraph 0058, a PCle-addressable memory of the
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`computing host); and the recording medium (Fig. 1B, 104).
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`

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`Application/Control Number: 15/428,277
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`Page 9
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`Art Unit: 2185
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`13.
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`Regarding claim 6, Cohen in view of Freimuth teaches the information
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`processing apparatus of claim 5. Cohen further teaches wherein the digital device is
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`configured by the host device and the adapter (Fig. 1B, Digital device 102).
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`Conclusion
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`14.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to HARRY WANG whose telephone number is (571 )270-
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`1716. The examiner can normally be reached on Monday-Friday: 9 am - 3 pm.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Tim Vo can be reached on (571)272-3642. The fax phone number for the
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`organization where this application or proceeding is assigned is 571 -273-8300.
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`