DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/08/2025 has been entered.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2-61 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claim 2 recites the limitation “wherein the primary display and the secondary display are capable of swapping applications”. It is noted by the Examiner that “the portable device runs a second application that displays a second image on the secondary display screen and the portable device runs a first application that displays a first image on the primary display screen”. Although a second image is associated with a secondary display by being displayed thereon, and a first image is associated with a primary display by being displayed thereon, neither application is associated with either display. Displays do not run applications at all; rather, some other portion of a portable device (e.g., a processor) functions to run one or more applications. The Examiner suggests --wherein the primary display and the secondary display are capable of swapping images [[applications]]--. For prior art examination purposes, swapping applications is construed as capable of occurring after a second application displays a second image on a secondary display screen and a first application displays a first image on a primary display screen, and swapping applications is construed as capable of occurring before the second application displays the second image on the primary display screen and the first application displays the first image on the secondary display screen.
Regarding independent claim 25: A similar recitation is similarly indefinite.
Regarding independent claim 44: A similar recitation is similarly indefinite.
Regarding independent claim 49: A similar recitation is similarly indefinite.
Regarding independent claim 53: A similar recitation is similarly indefinite.
Other pending claims are indefinite by virtue of dependency from at least one indefinite claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 2-14, 16, 21-33, 35, and 40-61 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over The Legend of Zelda Phantom Hourglass for Nintendo DS (see instruction manual published 2007, hereinafter Phantom Hourglass; see also description on pages 55-56 within chapter 2 of Swink, Game Feel: A Game Designer's Guide to Virtual Sensation, 2009; see also Sirloin, The Legend of Zelda: Full Game Walkthrough, 30 July 2021, https://www.youtube.com/watch?v=-NZhP2VHiqk) in view of Parker et al (US 20050134524 A1), and further in view of Reyes et al (US 20040204126 A1).
See teachings, findings, and rationale in the final rejection mailed 12/08/2025.
Regarding independent claim 2: Phantom Hourglass shows that the second application (The Legend of Zelda Phantom Hourglass) is the same as the first application (The Legend of Zelda Phantom Hourglass).
Regarding the limitation “or different from”: It is noted by the Examiner that these limitations are recited in the alternative. The claim is met by a prior art teaching of one alternative (“the same as”), even in the absence of the other alternative (“or different from”).
Regarding independent claim 25: See teachings above for claim 2.
Regarding independent claim 44: See teachings above for claim 2.
Regarding independent claim 49: See teachings above for claim 2.
Regarding independent claim 53: See teachings above for claim 2.
Claims 18 and 37 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over The Legend of Zelda Phantom Hourglass for Nintendo DS (see instruction manual published 2007, hereinafter Phantom Hourglass; see also description on pages 55-56 within chapter 2 of Swink, Game Feel: A Game Designer's Guide to Virtual Sensation, 2009; see also Sirloin, The Legend of Zelda: Full Game Walkthrough, 30 July 2021, https://www.youtube.com/watch?v=-NZhP2VHiqk) in view of Parker et al (US 20050134524 A1) and Reyes et al (US 20040204126 A1) as applied above, and further in view of Senupuku et al (US 20050083642 A1).
See teachings, findings, and rationale in the non-final rejection mailed 04/24/2025.
Claims 15 and 34 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over The Legend of Zelda Phantom Hourglass for Nintendo DS (see instruction manual published 2007, hereinafter Phantom Hourglass; see also description on pages 55-56 within chapter 2 of Swink, Game Feel: A Game Designer's Guide to Virtual Sensation, 2009; see also Sirloin, The Legend of Zelda: Full Game Walkthrough, 30 July 2021, https://www.youtube.com/watch?v=-NZhP2VHiqk) in view of Parker et al (US 20050134524 A1) and Reyes et al (US 20040204126 A1) as applied above, and further in view of O’Gorman (US 20070120762 A1).
See teachings, findings, and rationale in the non-final rejection mailed 04/24/2025.
Claims 17, 19-20, 36, and 38-39 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over The Legend of Zelda Phantom Hourglass for Nintendo DS (see instruction manual published 2007, hereinafter Phantom Hourglass; see also description on pages 55-56 within chapter 2 of Swink, Game Feel: A Game Designer's Guide to Virtual Sensation, 2009; see also Sirloin, The Legend of Zelda: Full Game Walkthrough, 30 July 2021, https://www.youtube.com/watch?v=-NZhP2VHiqk) in view of Parker et al (US 20050134524 A1) and Reyes et al (US 20040204126 A1) as applied above, and further in view of Hashimoto et al (US 20060101354 A1).
See teachings, findings, and rationale in the non-final rejection mailed 04/24/2025.
Response to Arguments
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive.
The newly added limitations (“wherein the second application is the same as or different from the first application”) are recited in the alternative. The claim is met by a prior art teaching of one alternative (“the same as”) even in the absence of the other alternative (“different from”). In this case, the second application (The Legend of Zelda Phantom Hourglass) is the same as the first application (The Legend of Zelda Phantom Hourglass). The prior art teaching of one alternative (“the same as”) satisfies the claimed limitations (“the same as or different from”) even in the absence of a prior art teaching of the other alternative (“different from”).
In response to applicant's argument that the references fail to show certain features, it is noted that the features upon which applicant relies (e.g., not part of the same instance of the application for the same ongoing game session, entire process not running in continuum, not returning to a background once an action is completed by a user, a user interacting with another application while using a game application, showing a map on a main screen at times when a character doesn’t have a map in hand and/or doesn’t receive instruction to blow dust, a secondary screen not being an accessory to a primary screen, different instances of an application, non-ongoingness of a game session, swapping for a purpose other than prompting a user to undertake a certain task, non-return after the user completes said task, an email program, a program different from an email program, non-destruction of a second display stack, default behavior, etc.) are not recited in the rejected independent claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In this case, Phantom Hourglass game play routinely relies upon a feature wherein primary and secondary displays swap applications (to the extent understood) as described in the Final Rejection mailed 09/08/2025. Before the swap, the application displaying a second image (map or sea chart, for example) on the secondary display (top screen) screen is the same application (The Legend of Zelda Phantom Hourglass) as the application displaying a first image (characters or a boat, for example) on the primary display screen (bottom screen). After the swap, the application displaying a second image (map or sea chart) on the primary display screen (bottom screen) is the same application (The Legend of Zelda Phantom Hourglass) as the application displaying a first image (characters or boat) on the secondary display screen (top screen).
Actual occurrence of prior art swapping means that the prior art device is capable of swapping, though the pending independent claims do not require any actual swapping to ever occur.
Dependent claims are argued only by virtue of their dependency from independent claims.
For these reasons, Applicant’s arguments are non-persuasive. All pending claims are obvious in view of the prior art of record.
Conclusion
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Julie Anne Watko whose telephone number is (571)272-7597. The examiner can normally be reached Monday-Tuesday 9AM-5PM, Wednesday 10:30AM-5PM, Thursday-Friday 9AM-5PM, and occasional Saturdays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ke Xiao can be reached at 571-272-7776. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
JULIE ANNE WATKO
Primary Examiner
Art Unit 2627
/Julie Anne Watko/Primary Examiner, Art Unit 2627
01/10/2026