DETAILED ACTION
This is a final reissue action of U.S. Patent No. 10,159,895 (hereafter “the ’895 patent” and equivalent), addressing the response filed 26 August 2025. For reissue applications filed on or after 16 September 2012, all references to 35 USC § 251 and 37 CFR §§ 1.172, 1.175 and 3.373 are to the current provisions.
Status of the Claims
The following is a status of the claims as presented:
Claims 1-9,. 11-22 and 31 are presented. Of those:
Claims 1, 8, 17, and 19 are twice amended
Claims 2-5, 7, 9, 11, 12 and 18 are amended
Claims 6, 14, 15 and 20-22 are as patented
Claims 13 are thrice amended
Claim 31 is new
Claims 10 and 23-30 are cancelled
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Maintenance Fees
Review of the record indicates that the maintenance fees are current. The next maintenance fee window opens 25 December 2025.
Response to Arguments
The following addresses Applicant’s remarks/arguments dated 26 August 2025. Matters not addressed under this heading, e.g. claim amendments to overcome art, will be addressed elsewhere as appropriate.
Claim Objection – response p. 18:
Applicant’s amendment to claim 8 remedies the objection raised under this heading and the objection is withdrawn.
Claim Rejection – 35 USC 112 – response, beginning p. 18:
Regarding applicant’s argument with Claim 9 (response: page 18), the examiner respectfully disagrees. The preamble only claims “a combination”: the preamble does not state what limitations constitute the combination, and “a combination” is generic language. While not disagreeing with applicant’s citation of MPEP 2173.01, the examiner does respectfully disagree with its application. “Associated with” does not necessarily mean that it is part of “a combination”. Even in applicant’s remarks, a clear line of what constitutes “a combination” is not stated. Applicant only states that that the structural bridge has a first end “associated with” one control module and a second end “associated with” another control module. It does not state that the control module is actually a part of the combination. As a result, the rejection remains.
Regarding the additional rejection of Claim 9 (response: page 19), the amendment to address the rejection directed to the “right, left, upper, and lower sides” overcomes the rejection and the rejection is withdrawn.
Regarding Claim 19 (response page 19), applicant’s amendments overcome the rejections under this heading and the rejections are withdrawn.
Claim Rejection – 35 USC 102 (response: page 20):
Claim 1 (response: page 20)
Regarding Claim 1, applicant’s arguments are respectfully not persuasive. While not disputing the claimed language with respect to the relationship between the control modules and the confinement structures, the examiner maintains the interpretation of the prior art is proper. The language at issue is that each control module is a “separate and distinct structure” from the pair of confinement structures, “forming no structural portion” of the confinement structures. Upon review of the disclosure, the confinement structures of the present invention are labeled as 316 as exemplified in Figs. 16-18 and 21 and the control modules are 252. The language of the written description does not define what constitutes the claimed language at issue, nor is the language at issue provided in the written description, but rather only in the claim. While noting the connection features of 334, as shown in Fig. 21, the examiner takes the position that the interpretation of the language at issue is not necessarily limited to only this configuration.
Turning now to Fig 2. of Willner, the examiner defined the control modules as the “buttons and switches as shown in Fig. 2; e.g., 188, 200” and the confinement structures as 102 and 104 (e.g., Willner: Fig. 1). As defined, “structure” means “something (such as a building) that is constructed” or “something arranged in a definite pattern of organization”. See https://www.merriam-webster.com/dictionary/structure . As defined, the buttons and switches of Willner meet this limitation and are “separate and distinct” from the confinement structure as shown. As a result, the examiner maintains the rejection is proper.
Claim 13 (response: page 21)
Applicant’s amendment to the claim addressing the art applied is noted and will be addressed accordingly in the rejection section of this Office action. The examiner’s position with respect to “confinement structures” is the same as that previously presented, and the position will not be repeated here for brevity.
Claim 18 (response: pages 22 and 23)
Applicant’s amendment to the claim addressing the art applied is noted and will be addressed accordingly in the rejection section of this Office action. The examiner’s position with respect to applicant’s arguments are the same as those previously presented, and the examiner will not repeat the position here for brevity.
Claim 19 (response: pages 23-25)
Applicant’s arguments are directed to the claims as amended, which the examiner addresses below.
Amendments
While not an objection, it has been noted that applicant provided the language of several claims that were written as patented, which is appreciated for ease of review. If applicant is to provide the language of claims as patented (i.e., without amendment), for clarity of the record, a status is requested. This would be applicable to claims 6, 14, 15 and 20-22.
Drawings
The replacement sheets submitted 26 October 2025, are objected to because the black-and-white line drawings are not labeled as “Amended” as required. Upon review, the drawings otherwise would be acceptable.
Corrected drawing sheets in compliance with 37 CFR 1.173(b)(3) are required in reply to the Office action to avoid abandonment of the application. Amendments in reissue applications are different from standard utility application practice and are governed by 37 CFR 1.173. In particular, 37 CFR 1.173(b)(3) reads, with emphasis added:
Drawings. One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.
(i) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as "Annotated Marked-up Drawings" and must be presented in the amendment or remarks section that explains the change to the drawings.
(ii) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
The objection to the drawings will not be held in abeyance. See also MPEP 1453.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
In the instant case, “means for controlling a movement” per claim 19, line 7, is interpreted as not invoking the provisions under this heading, as the means statement includes substantial structural limitations (e.g., input module, camera and keyboard).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 9 is 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.
Claim 9: the language of the claim is indefinite as “A combination” (preamble) is initially provided, and language is directed to the bridge having first and second ends “associated with” a first and second control module (lines 2-4). The language “associated with” is indefinite as it is unclear if this is positively claiming the first and second control modules.
Those claims listed under this heading but not directly addressed are rejected as being dependent from a rejected claim, either directly or indirectly.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Rejection citing Willner (U.S. Publication 2001/0045938):
Claim(s) 1-8, 13-16 and 18 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Willner (U.S. Publication 2001/0045938).
Below is a reproduction of the examined claims with the examiner’s comments in bold italics.
Claim 1: Willner discloses A combination comprising:
a computing device (Fig. 4: 10);
a pair of confinement structures (102, 104) adjacent at least two opposing sides of the computing device (as shown), but not more than three sides of the sides of the computing device (as shown), each of the pair of confinement structures comprising a communication link (as shown in Fig. 3c: 182, 184), each of the communication links configured for electronic communication with the computing device (either directly or indirectly);
a structural bridge (210) disposed between the pair of confinement structures and secured to each confinement structure of the pair of confinement structures (via 214 and 216), the structural bridge defining a passageway between the pair of confinement structures (area between the confinement structures), the passageway adapted to permit electrical communication between the communication link of a first confinement structure of the pair of confinement structures and the computing device and between the communication link of a second confinement structure of the pair of confinement structures and the computing device (as exemplified in Fig. 3c; see also Col. 12, lines 55-58 which notes a hard wiring connection may be provided among the controllers and computing device);
a fastening mechanism (e.g., 178, 178’, 214, 214’) securing each confinement structure of the pair of confinement structures to the structural bridge (as shown); and
a pair of control modules (buttons and switches as shown in Fig. 2; e.g., 188, 200), each control module of the pair of control modules interacting with a corresponding confinement structure of the pair of confinement structures (as shown), each control module in electronic communication with the communication link of its corresponding confinement structure (per function), each of the pair of control modules providing an input module aperture (receiving 188, 200), wherein said input module apertures are adjacent each of the at least two opposing sides of the computing device (as shown using the broadest reasonable interpretation in light of applicant’s specification), and wherein each control module is a separate and distinct structure from the pair of confinement structures (as shown), forming no structural portion of the pair of confinement structures (as shown), and in which each of the pair of confinement structures are separate and distinct structures from the structural bridge (as shown as they can be separated), forming no structural portion of the structural bridge (as shown, the bridge is independent of the confinement structures).
Claim 2: Willner provides The combination of claim 1, in which the structural bridge supports electronics associated with the computing device (as shown and best understood, this is considered functional language as no language is provided to determine the metes and bounds of what constitutes “electronics” or “associated”, and is fully capable of being achieved by the prior art).
Claim 3: Willner provides The combination of claim 2, in which the computing device further comprises a back (as shown), the back provides an internal surface (inside the casing of the computing device), an external surface cooperates (e.g., visible surface) with the least two opposing sides of the computing device (e.g., perimeter edges).
Claim 4: Willner provides The combination of claim 3, in which the structural bridge cooperates with the back of the computing device (as shown and generally disclosed, and using the broadest reasonable interpretation in light of applicant’s specification regarding “cooperates”).
Claim 5: Willner provides The combination of claim 4, in which the structural bridge is adjacent to the external surface of the back of the computing device (as shown and disclosed, generally).
Claim 6: Willner provides The combination of claim 4, in which the computing device comprises an electronic display screen (not labeled, but clearly shown in Fig. 4), and wherein at least one control module of the pair of control modules passes signals through its corresponding communication link to the computing device (as per the purpose of the control modules), the signals passed to the computing device controlling images displayed on the electronic display screen of the computing device (it is a gaming controller device as disclosed; see Col. 4: line 60 – Col. 5, line 20).
Claim 7: Willner provides The combination of claim 2, in which the electronics supported by the structural bridge is a communication module associated with the computing device (using the broadest reasonable interpretation in light of applicant’s specification and in light of the hard wiring permitted with the device, the prior art meets the limitation of “communication module”).
Claim 8: Willner provides The combination of claim 2, in which the structural bridge and the pair of confinement structures form a communication port (as shown generally; proximate 178 and 180 are communication ports).
Claim 13: Willner discloses A combination comprising:
a first control module (e.g., 102) of a pair of control modules, and a second control module (104) of the pair of control modules, each of the first and the second control modules comprising a plurality of input module apertures (e.g., Fig. 2: receiving 188, 200, 190, 202, etc. at shown), each input module aperture supports an instructional input device (e.g., respective switches and buttons), at least one of the first and the second control modules further comprising an attachment stay (178’, 180’ as exemplified in Fig. 3C); and
a structural bridge (210) interposed between said first and second control modules (as shown in Fig. 4), and interposed between a first confinement structure (182 is a confinement structure in that they retain the bridge) and a second confinement structure (same as the first confinement structure but with respect to the second control module), said structural bridge comprising a first side (proximate 216), said first side of said structural bridge in contact adjacency with said first control module (as shown), said structural bridge further comprising a second side (proximate 214), said second side of said structural bridge in contact adjacency with said second control module (as shown), said structural bridge still further comprising a retention member (216), the retention member interacts with the attachment stay (178’), the interaction of the attachment stay with the retention member couples the structural bridge to a control module of the pair of control modules (as shown),
wherein each of the first and the second control modules is a separate and distinct structure from the structural bridge and from the first and second confinement structures (as shown, the control module is not part of the bridge, and it is not part of the confinement structure as the control module is limited to 102 as interpreted), forming no structural portion of the structural bridge or the first and second confinement structures. (as shown and best understood, generally).
Claim 14: Willner discloses The combination of claim 13, further comprising a computing device (Fig. 4: 10), the computing device comprising an upper, lower, left and right side (as shown), collectively the sides of the computing device, the computing device disposed between and in contact adjacency with each the first and second control modules of the pair of control modules (via the bridge as shown), the pair of control modules engaging the computing device on at least two opposing sides of the computing device (either directly or indirectly), but not more than three sides of the sides of the computing device (as shown), said pair of control modules are separate and distinct structures from the computing device (as shown).
Claim 15: Willner discloses The combination of claim 14, in which the structural bridge is a rigid structural bridge (it would necessarily have rigid properties based on its function, reception of 10 and connection to the control modules), the rigid structural bridge comprising a signal pathway for use in passing signals from each said first and second control modules (equating to pins and sockets as shown in Fig. 3C).
Claim 16: Willner teaches The combination of claim 15, in which the computing device further comprises a back (side opposite display as shown in Fig. 4), the back provides an internal surface, an external surface, and upper, lower, left and right sides (inherent), collectively the sides of the back of the computing device, the back of the computing device cooperating with the sides of the computing device (as shown), and in which the rigid structural bridge cooperates with the back of the computing device (as shown generally via portion proximate 212 as shown in Fig. 4).
Claim 18: Willner discloses A combination comprising:
a pair of confinement structures (102, 104);
a first communication link (proximate 178’ as shown in Fig. 4), the first communication link supported by a first confinement structure of the pair of confinement structures (as shown);
a second communication link (proximate 180’), the second communication link supported by a second confinement structure of the pair of confinement structures (as shown);
a structural bridge (210) interposed between the first confinement structure and the second confinement structure (as shown), the structural bridge comprising a passageway (receiving 10) and fastening members (portion receiving first and confinement structures as shown), the fastening members facilitate a joining of each the first confinement structure and the second confinement structure of the pair of confinement structures to the structural bridge (as shown), while the passageway accommodates communication by way of at least the first communication link (as disclosed; see also Fig. 8, generally, and Col. 12, lines 45-59); and
a pair of control modules (e.g., control pads and buttons and switches 188, 200, 190, 202, collectively), a first control module of the pair of control modules attached to the first confinement structure (as shown), and a second control module of the pair of control modules attached to the second confinement structure (as shown), the first control module in electronic communication with the first communication link, the second control module in electronic communication with the second communication link (as would be necessary to function as desired), each the first and the second control modules comprising a plurality of input module apertures (receiving the respective controls, buttons and switches), each input module aperture secures an instructional input device (respective buttons and switches), and in which neither the first nor the second control module form a structural portion of either the first or second confinement structures (as disclosed), and
wherein each of the first control module and the second control module is a separate and distinct structure from the structural bridge forming no structural portion of the structural bridge (as shown).
Rejection citing Michael (U.S. Publication 2010/0195279):
Claim 19: Michael discloses An apparatus comprising:
a computing device (e.g., Fig. 2: 34), the computing device providing a plurality of sides (as shown, the perimeter sides), each of the plurality of sides disposed between an electronic display screen of the computing device and a back (side opposite visible side as exemplified in Fig. 5) of the computing device;
an electronic game (paragraphs [0075] and [0196]) communicating with the computing device, the electronic game providing a virtual object displayed on the electronic display screen of the computing device (as would be displayed when playing games on an electronic device); and
means for controlling a movement (e.g., controller 47 and as explained below) of the virtual object displayed on the electronic display screen of the computing device,
wherein the means for controlling the movement of the object displayed on the electronic display screen is provided by an input device (e.g., 47 is the input device), the input device comprises:
input module apertures (openings receiving buttons and keys as shown in Fig. 5) provided by the input device, each input module aperture accepts either a game control module or a keyboard module (as shown and described in paragraph [0131]) as selected by a user, wherein said input module apertures are adjacent each of the at least two opposing sides of the plurality of sides of the computing device (as shown in Fig. 5); and
a structural bridge (platform 9) interposed between the input module apertures (it is between the apertures of the first and device, e.g., 24 and 25 as shown in Fig. 2)
a camera communicating with each the input device (paragraph [0132] notes that a camera may be used as a modular device) and the computing device, the camera capturing either still or video images as selected by the user (as disclosed), and in which the camera is responsive to at least the removable keyboard module when said keyboard module is operatively installed by the user within the input module aperture (as taught), and in which the removable keyboard module is a pair of touch responsive electronic display screens (see paragraph [0074] which notes touch screens may be employed to contain aa standard Qwerty keyboard), each of the touch responsive electronic display screens having at least the functionality of the electronic display screen (as best understood), includes the functionality of a touch pad, and presents virtual keys of a keyboard for information entry (as disclosed).
Allowable Subject Matter
Claims 9, 11, 12, 17 and 31 are allowed.
Claims 20-22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,159,895 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WILLIAM V GILBERT/ Reexamination Specialist, Art Unit 3993
CONFEREES:
/MATTHEW J KASZTEJNA/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993