DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This Office Action is made in response to applicant’s amendment filed on 11/21/2025. Claims 1-4, 6, 8-21 and 23 are currently pending in the application. An action follows below:
Response to Arguments
The rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, in the previous Office action dated 08/25/2025 have been withdrawn in light of the amendment to claims.
In response to the rejections under pre-AIA 35 U.S.C. 112(a) in the previous Office action, Applicant has amended all independent claims and asserted on pages 10-11 of the amendment arguments, which have been fully considered but they are not fully persuasive as follows:
(i) Regarding to the limitation, “the computer mouse of operational parameters’ of claim 1, Applicant has argued on page 10 of the amendment: “Paragraph [00026] and FIG. 6 describe/illustrate detection of a selection (step 604) and a determination (step 606) of one or more operating parameters for programming a navigation device 100 based on that selection; see also paragraph [00030] (providing "[o]nce one or more operational parameters of the navigation device 100 …” Examiner notes that the paragraph [0030] indicated by the above Applicant in the argument clearly discloses “operational parameters of the navigation device 100” (i.e., non-physical operational parameters being features of the navigation device or a computer mouse 100) while claim 1, in contrast, recites, “the computer mouse of operational parameter”, i.e., the physical computer mouse being an element of non-physical operational parameter. Therefore, this rejection is maintained.
(ii) Regarding to the limitation, “wherein the operational parameters include a parameter to control frequency of reports sent to the computing device, the reports including a move count reported to the computing device, and wherein the move count reported to the computing device is defined by the movement count resolution parameter” in last 5 lines of claim 1, Applicant has argued on page 10 of the amendment that the original disclosure, specifically Fig. 6, ¶¶ 22, 24-25, provides a support for the above underlined limitations. Examiner respectfully disagrees. The original disclosure, specifically ¶ 22 of the specification, explicitly discloses “a movement count resolution parameter” being different from “a parameter to control frequency of reports sent to the computing device” and does not explicitly discuss in detail “reports” in “frequency of reports sent to the computing device” including a move count reported to the computing device and defined by the movement count resolution parameter, as claimed. Therefore, this rejection is maintained.
Note that some rejections of claim 1, which have been withdrawn in light of the deletion of limitation(s) and/or amendment, are not addressed. The responses to the rejections of claims 12 and 17 are similarly addressed as that of claim 1 above.
In response to the rejections under pre-AIA 35 U.S.C. 103(a) in the previous Office action, Applicant has amended all independent claims to include new limitations, “assigning, based on the detecting, the operational parameters to a plurality of profiles stored in the memory on a driver-independent basis such that the operational parameters affect operations of the computer mouse without programming assistance of an external computing device” and provided on pages 13-14 of the amendment an argument that Ram, Fig. 31 and ¶ 301, describes using software controls and dialog boxes on the host PC to map mouse velocity, control settings, and manage profiles. Examiner respectfully disagrees because
(i) Ram ¶ 301 discloses “The mouse tab 391 contains a control and settings area 397 for the mouse electronics and software similar to that found in a computer mouse in the Control Panel area of a typical Windows operating system …” and further discloses at ¶ 366 “… the mouse apparatus may serve as the host device itself …” and
(ii) Applicant has ignored other teachings of Ram discussed in the rejection, including at least Figs. 53a-53b and the corresponding description at ¶¶ 369-373; Figs. 47-50, 55, 56 and the corresponding description; and , disclosing assigning, based on the detection, the operational parameters to a plurality of mouse property profiles, including at least mouse/cursor velocity profiles, stored in the memory [¶ 210], wherein the operational parameters are used to affect the operations of the computer mouse; and Figs. 98A-98B; ¶¶ 465-468. See the below rejection.
Regarding to the second set of rejections, Examiner notes that the combination of prior arts can provide the best missing feature(s) but the motivation is not the best while another combination of prior arts can provide the appropriate missing feature(s) with the best combination and motivation, so as to minimize the argument of the applicant regarding to the combination and the motivation. Note that because the limitation taught by Frulla and Woolf is deleted, the second set of rejections is no longer in the Office action.
With respect to the double patenting rejection in the previous Office action, the Applicant has requested on pages 14-15 of the amendment, “[T]he assertion of the abovementioned double patenting rejections is acknowledged and an appropriate course of action … it is respectfully requested that the Examiner call the undersigned to discuss the potential for filing a terminal disclaimer to place the application in condition for allowance.” Examiner notes that even only the double patenting rejection is present, an indication of allowance of all of the claimed subject matter in the present application can’t be made in the Office action as the claim(s) being rejected. Therefore, in order not to prolong the process of application in the case of only the double patenting rejection remaining, a waste time of waiting for the Applicant to address the appropriateness of the rejection or file a terminal disclaimer should be avoid and another Office action is not necessary to be made with only the double patenting rejection and to respond any argument with respect to the double patenting rejection. Therefore, the Office suggests the applicant to either provide any argument so as to fully respond to the Office action as required or submit a terminal disclaimer in the response to the double patenting rejection. Note that Applicant should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6, 8-21 and 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Note that, in order to satisfy its burden under the written description requirement, a patent application must disclose the full scope of the claim. Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004) (The purpose of the written description requirement is to “ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.”.)
As per claim 1, this claim recites a limitation, “the computer mouse of operational parameters” in line 8, which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. A review of the whole original disclosure did not reveal the support for the above underlined limitation of claim 1. Moreover, a person having an ordinary skill in the art would have readily recognized that the physical computer mouse can’t be element of the non-physical operational parameters. Further, see the above bolded note.
In addition to claim 1, this claim further recites limitations, “wherein the operational parameters include a parameter to control frequency of reports sent to the computing device, the reports including a move count reported to the computing device, and wherein the move count reported to the computing device is defined by the movement count resolution parameter” in last 5 lines, which include features, “wherein the operational parameters include a parameter to control frequency of a move count reported to the computing device, and wherein the move count reported to the computing device is defined by the movement count resolution parameter,” which were not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The original disclosure, specifically paragraph [00022] of the specification, discloses the different operational parameters including “a parameter of movement count resolution” and “a parameter to control frequency of reports sent to the computing device”, but does not explicitly discuss in detail “reports” in “frequency of reports sent to the computing device” including a move count reported to the computing device and defined by the movement count resolution parameter, as claimed. Therefore, the original disclosure does not explicitly disclose in detail the above underlined limitations, so as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. Further, see the above bolded note.
As per claims 2-4, 6, 8-11 and 21, these claims are therefore rejected for at least the reason set forth in claim 1 above.
As per claim 12, see the rejection of claim 1 for similar limitations. Note that a navigation device of claim 12 corresponds to a computer mouse of claim 1.
As per claims 13-16, these claims are therefore rejected for at least the reason set forth in claim 12 above.
As per claim 17, see the rejection of claim 12 for similar limitations.
As per claims 18-20 and 23, these claims are therefore rejected for at least the reason set forth in claim 17 above.
Notice to Applicant(s)
Examiner notes that the specification is not the measure of invention. Therefore, limitations contained therein can’t be read into the claims for the purpose of avoiding the prior art. See In re Sporck, 55 CCPA 743, 386 F.2d 924, 155 USPQ 687 (1968).
Further, the names/ terms of the features/elements used in the pending application or pending claims may be different from the names/terms of the matching features/ elements of the prior arts; however, the matching features/ elements of the prior arts contain all characteristics/ functions of the features/elements DEFINED by the pending claims.
Note that in order to avoid confusion, the below citations in the below rejection(s) are mere one or more places in the reference to disclose the "claimed" limitation(s) and/or are directed to one or more of embodiments disclosed by the cited reference(s). In other words, the “claimed” features/limitations may be read in other places in the reference or other embodiments of the reference. In order to better understand how the claimed limitations are taught by the reference(s), a review of the entire reference(s) is suggested by the examiner. Applicant is reminded a prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention as not all relevant paragraphs may have been cited in the rejection. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
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 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.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
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 of this title, 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.
Claims 1-4, 6, 8-19, 21 and 22 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ram (US 2007/0132733 A1) in view of Yuan et al. (US 8,248,024 B2; hereinafter Yuan,) Sangster et al. (US 2009/0144621 A1; hereinafter Sangster,) Yasutake (WO 2007/109286 A2,) Tan (US 2011/0084904 A1,) Coe (US 2008/0074391 A1,) Simon et al. (US 5,160,853; hereinafter Simon,) Devroy (US 2007/0012675 A1,) and Gunsch (US 2003/0117261 A1.)
As per claim 1, Ram discloses a computer mouse (see at least a computer mouse shown in at least Figs. 3, 16, 22, 28, 42, 53, 87, 98A,) comprising:
a power supply (see at least Figs. 16, 28, 42, 118; ¶¶ 217, 336, 488-489, disclosing the computer mouse comprising various types of power supply;)
a scroll wheel located at a top surface of a housing assembly of the computer mouse (see at least any of Figs. 5, 6, 22, 42, 53, 98A;)
a reset button [1473] that is see Ram at least Fig. 69 or 79; ¶ 430, ¶ 439;)
a memory (see at least Fig. 13, 16, a memory 209/233) that stores computer instructions (see at least ¶ 198;) and
a controller coupled to the memory (see at least ¶¶ 16, 220, 224, 239, disclosing, in the mouse, one or more CPU processor and supporting chipsets coupled to the tracking device, the display, the memory, and other elements,) wherein the controller, responsive to executing the computer instructions, performs operations comprising:
detecting a selection made at the computer mouse of operational parameters (see at least Figs. 53A-53b; ¶¶ 371-373, disclosing: detecting, based on the presenting of the menu, a selection made at the left click button of the computer mouse of one or more of the operational parameters from the menu; Fig. 31; ¶¶ 300-302, disclosing: detecting, based on the presenting of the menu, a selection made at the computer mouse on the apply button 400 of one or more of the operational parameters from the menu; also see Figs. 47, 53, 55, 56, disclosing: detecting, based on the presenting of the menu, a selection made at the computer mouse on the apply button of one or more of the operational parameters from the menu; see Figs. 98A-98B; ¶¶ 465-468, disclosing: detecting, based on the presenting of the menu, a selection made at the left click button 1627 or the right click button 1628 of the computer mouse of one or more of the operational parameters from the menu;) and
assigning, based on the detecting, the operational parameters to a plurality of profiles stored in the memory on a driver-independent basis such that the operational parameters affect operations of the computer mouse without programing assistance of an external computing device (see at least Figs. 53A-53B; ¶¶ 371-373, disclosing: assigning, based on the detecting, the cursor operational parameters of the computer mouse on the PC1 display, the operational parameters of the computer mouse on the PC2 display …, and the cursor operational parameters of the computer mouse on the TV display, corresponding to the selection to a plurality of profiles stored in the memory on a driver-independent basis such that the operational parameters affect operations of the computer mouse without programing assistance of an external computing device; also see Figs. 47-50, 55, 56, disclosing assigning, based on the detection, the operational parameters to a plurality of mouse property profiles, including at least mouse/cursor velocity profiles, stored in the memory [¶ 210] on a driver-independent basis such that the operational parameters affect operations of the computer mouse without programing assistance of an external computing device; see Figs. 98A-98B; ¶¶ 465-468, disclosing: assigning, based on the detecting, the operational parameters of the computer mouse, such as a programmable option to control operational parameters of the computer mouse in the EXCEL application, a programmable option to control operational parameters of the computer mouse in the WORD application, and a programmable option to control operational parameters of the computer mouse in the TRADE application, corresponding to the selection to a plurality of profiles stored in the memory on a driver-independent basis such that the operational parameters affect operations of the computer mouse without programing assistance of an external computing device; further see ¶ 366 disclosing “… the mouse apparatus may serve as the host device itself …”,) wherein the operational parameters include a mouse/cursor movement parameter for navigating in a graphical user interface (GUI) presented by a software application including an operating system (see the above discussion or at least Figs. 47-50, 55, 56, for the operational parameters including a mouse/cursor movement parameter for navigating in a graphical user interface (GUI) presented by various software applications; further see at least ¶¶ 152, 185, 362, 373, 458, 459, 468, disclosing the mouse/cursor movement parameter for navigating in a graphical user interface (GUI) presented by a software application including a window operating system and game application,) wherein the operational parameters include a parameter to control line straightening when navigating in the GUI (see at least Figs. 49-50; ¶ 360, discussing the operational parameters including a parameter to control line straightening when mouse/cursor moves; further see the above discussion or see at least ¶¶ 152, 185, 362, 373, 458, 459, 468, disclosing the mouse/cursor movement parameter for navigating in the GUI,) and wherein the operational parameters include a parameter to control navigation see the above discussion or at least Figs. 47-50, 55, 56 for the operational parameters including a parameter to control navigation mouse/cursor velocity and at least ¶¶ 152, 185, 362, 373, 458, 459, 468, for navigating in the GUI;)
wherein the power supply includes a first plurality of batteries (see at least Fig. 118; ¶¶ 217, 336, 488-489, disclosing the computer mouse comprising a first plurality of internal batteries,)
wherein the power supply includes a charging system for supplying energy to components of the computer mouse, the charging system including a DC transformer (see at least ¶ 336, disclosing the power supply including a solar charging system for charging the batteries and supplying energy to components of the computer mouse and the solar charging system including a DC to DC converter as a DC transformer.)
Accordingly, Ram discloses all limitation of this claim except that Ram does not explicitly disclose limitations: (i) “a wireless inductive charger,” (ii) “a movement count resolution parameter for navigating in a graphical user interface (GUI) presented by a software application including an operating system,” (iii) “wherein when the movement count resolution parameter is specified in terms of counts per inch (CPI) the computer mouse is programmed to monitor a request by way of a button to switch from a first CPI to a second CPI that is different from the first CPI”, (iv) “wherein when the movement count resolution parameter is specified in terms of dots per inch (DPI) the computer mouse is programmed to monitor a request by way of the button to switch from a first DPI to a second DPI that is different from the first DPI,” (v) “receiving macros, wherein at least one macro of the macros includes a sequence of button or keystrokes,” (vi) “wherein the operational parameters include a parameter to control navigation acceleration in the GUI,” (vii) “a reset button that is flush with a bottom side of the housing assembly and configured to reset the controller,” (viii) “wherein the receiving of the macros is based on a use of a tethered connection between the computer mouse and a computing device,” (ix) “wherein the operational parameters include a parameter to control frequency of reports sent to the computing device, the reports including a move count reported to the computing device,” and (x) “wherein the move count reported to the computing device is defined by the movement count resolution parameter,” as claimed.
Regarding to the above limitation (i), in the same field of endeavor, Yuan discloses a computer mouse (see at least Fig. 2, disclosing an electronic device 250; Col. 8:32-36 and 58-62, disclosing an electronic device being a computer mice) having a power supply including rechargeable batteries and a wireless inductive charger (see at least Figs. 2, 4 and the corresponding description, specifically Col. 6:23 to Col. 8:67, disclosing a power supply including rechargeable batteries [Col. 8:16-18] and a wireless inductive charger including elements [434, 472-476],) thereby at least providing low-cost inductive charging functionality for electronic devices (see at least Col. 1:41-52) including a computer mouse (see the above discussion; or see Col. 8:32-36 and 58-62.)
Ram, discussed above, discloses the power supply including the plurality of batteries and the solar charging system for charging the batteries, but is silent to a wireless inductive charger. Yuan, discussed above, discloses a wireless inductive charger for charging the batteries and providing low-cost inductive charging functionality for a computer mouse. Furthermore, one of ordinary skill in the art would have recognized that, in the case of insufficient sunlight environment, the solar charging system of Ram can’t fully charge the batteries. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to provide a wireless inductive charger in the computer mouse of Ram, in view of the teaching in the Yuan reference, to improve the above modified computer mouse of the Ram reference for the predictable result of providing low-cost inductive charging functionality for a computer mouse.
Regarding to the above limitations (ii), (iv), (ix) and (x), in the same field of endeavor, Sangster discloses a related computer mouse (see Fig. 1) performing operations comprising:
assigning operational parameters to be used to affect the operations of the computer mouse, wherein the operational parameters comprise a movement count resolution parameter for navigating in a graphical user interface (GUI) presented by a software application including an operating system (see at least Fig. 4; ¶¶ 18, 20, 24-26, disclosing to assign operational parameters, including at least a mouse movement parameter, and a mouse movement sensitive change parameter corresponding the claimed movement count resolution parameter, to be used to affect the operations of the computer mouse, for navigating in a graphical user interface (GUI) presented by a software application including a window operating system, a video game, or the likes,) wherein when the movement count resolution parameter is specified in terms of dots per inch (DPI) the computer mouse is programmed to monitor a request by way of the button to switch from a first DPI to a second DPI that is different from the first DPI (see at least Figs. 3-4; ¶¶ 22-26, disclosing a controller of the computer to perform operations comprising: monitoring a selection made on a macro record button 120 on the mouse to initiate a macro record process of changing a DPI of the tracking device [see step 310 of Fig. 3; ¶¶ 24-26, i.e., monitoring for a resolution change request [via DPI buttons 130-150] to change a resolution setting, among at least three different DPI resolution settings, of the tracking device, generating and storing a specified input and the macro associated with the specified input based on the selected change of DPI [see steps 320-340 of Fig. 3; ¶ 25]; and adjusting the DPI setting of the tracking device in the game application according to the DPI change made by the generated macro which is based on the DPI change request, thereby rendering “adjusting the resolution setting of the tracking device according to the resolution change request”,) wherein the operational parameters include a parameter to control frequency of reports sent to the computing device, the reports including a move count reported to the computing device, and wherein the move count reported to the computing device is defined by the movement count resolution parameter (see at least Figs. 3-4; ¶¶ 22-26, disclosing a controller of the computer to perform operations comprising: monitoring a selection made on a macro record button 120 on the mouse to initiate a macro record process of changing a DPI of the tracking device [see step 310 of Fig. 3; ¶¶ 24-26, i.e., monitoring for a resolution change request [via DPI buttons 130-150] to change a resolution setting, among at least three different DPI resolution settings, of the tracking device, generating and storing a specified input and the macro associated with the specified input based on the selected change of DPI [see steps 320-340 of Fig. 3; ¶ 25]; and adjusting the DPI setting of the tracking device in the game application according to the DPI change made by the generated macro which is based on the DPI change request, thereby rendering the operational parameter including a parameter to control frequency of reports sent to the computing device, the reports including a move count reported to the computing device the move count reported to the computing device is defined by the movement count resolution parameter, based on the change of the resolution setting, among at least three different DPI resolution settings,) in a particular application, such as a video game (see at least ¶ 23:last 4 lines; ¶ 25.)
Ram, as discussed above, discloses the computer mouse having the operational parameters and different macros associated with different requests, wherein the operational parameters include the mouse/cursor movement parameter for navigating in a graphical user interface (GUI) presented by a software application including an operating system. Sangster, as discussed above, discloses the operational parameter including a parameter to control frequency of reports sent to the computing device, the reports including a move count reported to the computing device, and the move count reported to the computing device defined by the movement count resolution parameter, for navigating in a graphical user interface (GUI) presented by a software application including an operating system, specified in terms of dots per inch (DPI) the computer mouse is programmed to monitor a request by way of the button to switch from a first DPI to a second DPI that is different from the first DPI, and other operational parameters and macro associate with a resolution change request, according to a particular application, such as a video game or the like. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to include a movement count resolution parameter in the Ram operational parameters and to utilize the Sangster macro technique associated with the resolution change of the tracking device in the Ram computer mouse, in view of the aforementioned teachings of the Sangster reference, to improve the above modified computer mouse of Ram for the predictable result of changing the resolution of the tracking device as user's desire in according with a particular application.
Regarding to the above limitations (iii), in the same field of endeavor, Yasutake discloses a related computer mouse (200; Fig. 1,) wherein when the movement count resolution parameter is specified in terms of counts per inch (CPI), the computer mouse is programmed to monitor a request by way of a button to switch from a first CPI to a second CPI that is different from the first CPI (see at least ¶¶ 31, 44.) Yasutake further discloses that the mouse having the movement count resolution parameter specified in terms of counts per inch (CPI) and dots per inch (DPI) to provide a user to choose high resolution pointing device performance in according to a particular application, such as a video game or the like is well-known in the art (see at least ¶¶ 2-3.)
Ram in view of Sangster, discussed above, obviously renders the movement count resolution parameter specified in terms of dots per inch (DPI), but is silent to counts per inch (CPI). Yasutake, discussed above, remedies for the deficiency of Ram in view of Sangster, to provide a user to choose high resolution pointing device performance in according to the movement count resolution parameter specified in terms of counts per inch (CPI) and dots per inch (DPI). Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to modify the movement count resolution parameter specified in terms of counts per inch (CPI) and dots per inch (DPI), in the above modified Ram computer mouse, in view of the aforementioned teachings of the Yasutake reference, to improve the above modified computer mouse of Ram for the predictable result of providing a user to choose high resolution pointing device performance in according to the movement count resolution parameter specified in terms of counts per inch (CPI) and dots per inch (DPI), as the user's desire in according with a particular application.
Regarding to the above limitation (v), in the same field of endeavor, Tan discloses a related computer mouse performing operations comprising: receiving macros, wherein at least one macro of the macros includes a sequence of buttons or keystrokes (see at least Figs. 1-4, 17; ¶¶ 37, 38, 41-44, disclosing a computer executing a software program to generate macro associated with the buttons or buttons 1-7 of the mouse and including a sequence of keystroke commands [wherein the sequence of keystroke commands comprises a timing of keystroke commands in the order in the sequence] from the computer device for the software application including a video gaming application [see at least ¶ 4] and to associate the macros with the buttons of the computer mouse; at ¶¶ 7, 35, 38, disclosing to store the macros and their associations in the memory of the computer mouse; further see ¶ 43 disclosing an example of the user-defined macro: " … Shown in FIG. 3 is the user-defined macro LShft↓A↓A↑K↓K↑LShft↑ …", i.e., the user-defined macro associated with the sequence of buttons or keystrokes.) Tan further discloses macros to facilitate user input by allowing relatively complex input by the mouse to be made with one or more button depressions (i.e., a sequence of button(s) or keystrokes) or other device manipulations (¶ 7) and to allow each user to customize the macros and personal setting to conform to personal taste (¶ 8.)
Ram further discloses the computer mouse having a plurality of profiles including a profile associated with the video gaming application and stored in the embedded memory or the external memory inserted into the external memory card reader of the computer mouse (see at least Figs. 98A-99B and ¶¶ 465-468, specifically ¶ 467:4-10 and ¶ 468: last 4 lines, disclosing presenting, by way of the display, a plurality of scrollable choices/options including GUI objects, icons, or items 1618 to receive a selection of one profile of the plurality of profiles to select program settings for the computer mouse without assistance from the computer device communicatively coupled to the computer mouse; also see ¶¶ 227-228, disclosing presenting, by way of the built-in integrated display (¶ 227:4-7, disclosing a menu list displayed on the built-in integrated display for selection), a plurality of options, such as an option to select one of a displayed list of network devices (see ¶ 227) as a network device profile, an option to select one of a displayed list target devices (see ¶ 228; also Figs. 53a, 53b) as a target device profile; Fig. 31; ¶¶ 300-302, also displaying presenting, by way of the display (¶ 227:4-7, disclosing a menu list displayed on the built-in integrated display for selection), a plurality of options to receive a selection of one profile of the plurality of profiles, including “Mouse”, “Wi-Fi”, “Harddrive”, “GPS”, “Power”, and “Settings” profiles, to select program settings for the computer mouse, , disclosing assigning operational parameters to a plurality of mouse property profiles, without assistance from a computer device communicatively coupled to the computer mouse at ¶ 224; also see Figs. 47, 53, 55, 56 for other profiles associated with the operational parameters of the mouse, such as the cursor velocity profile set in Fig. 47, the Trackpoint setting profile set in Fig. 55, or the top and bottom sensor function profile set in Fig. 56; further see Figs. 31, 47, 53, 55, 56; ¶¶ 300-304, disclosing, by selecting the “Apply”, the changes to device effected, i.e., programming the computer mouse according to the operational parameters of the one profile [such as the cursor velocity profile set in Fig. 47, the Trackpoint setting profile set in Fig. 55, or the top and bottom sensor function profile set in Fig. 56] to control operations of the computer mouse while a software application is in use by the computer device by virtue of ¶¶ 224-225; further at least ¶¶ 341, 362 or 465-468, disclosing at least one of the software applications being a video game application; see Figs. 98A-98B; ¶¶ 465-468, disclosing: assigning, based on the detecting, the operational parameters of the computer mouse, such as a programmable option to control operational parameters of the computer mouse in the EXCEL application, a programmable option to control operational parameters of the computer mouse in the WOED application, and a programmable option to control operational parameters of the computer mouse in the TRADE application, corresponding to the selection to a plurality of profiles stored in the memory.) Tan, as discussed above, discloses macro to facilitate user input by allowing relatively complex input by the mouse to be made with a sequence of button(s) or keystrokes or other device manipulations and to allow each user to customize the macros and personal setting to conform to personal taste, for the software applications including the video gaming application, and further discusses to store the macros on the EEPROM which is onboard on the computer mouse (¶ 38) or alternatively on the removable memory for use with other computer mouse (¶¶ 38-39). Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to apply the Tan macro technique in the Ram computer mouse and device, in view of the aforementioned teachings of the Tan reference, to improve the above modified computer mouse of Ram for the predictable result of facilitating user input by allowing relatively complex input by the mouse to be made with a sequence of button(s) or keystrokes or other device manipulations and allowing each user to customize the macros and personal setting to conform to personal taste, as taught by the Tan reference. Accordingly, the above modified Ram obviously renders the above limitation (v).
Regarding to the above limitation (viii), the above modified Ram obviously renders: wherein the receiving of the macro is based on a use of a tethered connection between the computer mouse and a computing device, the tethered connection being based on a use of a Universal Serial Bus (USB) cable (see Ram at least any of ¶¶ 9, 14, 142, 176, 196, 211, disclosing a USB cable connection between the computer mouse and a computing device; further see Tan, discussed above, disclosing the receiving macros including a sequence of commands associated with a plurality of manipulations of the computer mouse; further see Tan at least any of Figs. 1-4, also disclosing the computer mouse including a wire/cable/tethered connection for connecting between the computer mouse and a computing device.)
Regarding to the above limitation (vi), in the same field of endeavor, Coe discloses a computer mouse (a computer mouse 1; see at least Fig. 1A) having operational parameters comprising a jitter correction parameter affecting the operations of the computer mouse (see at least ¶ 6, ¶ 19, disclosing vibratory/ irregular motion of the mouse, detected within prescribed boundaries over a predetermined time period, to be a jiggle affecting the operations of the computer mouse) and a navigation acceleration parameter affecting operations of the computer mouse (see at least ¶ 6, ¶ 19, disclosing operational parameters comprising a navigation acceleration parameter affecting operations of the computer mouse,) thereby activating a software application command without specific positioning of a mouse or clicking a mouse button (see at least ¶ 6.)
The above modified Ram, as discussed above, discloses the operational parameters comprising a control frequency parameter, a line straightening parameter, a jitter correction parameter, and a movement count resolution parameter and the macro associated with a plurality of manipulations of the computer mouse, except for the limitation (vi). Coe, as discussed above, discloses the computer mouse including the operational parameters comprising at least a navigation acceleration parameter, thereby activating a software application command without specific positioning of a mouse or clicking a mouse button (see at least ¶ 6.) Thus, it would have been obvious for one of ordinary skill in the art to include a navigation acceleration parameter in the operational parameters of the above modified Ram computer mouse, in view of the teaching in the Coe reference, to improve the modified Ram computer mouse for the predictable result of activating a software application command without specific positioning of a mouse or clicking a mouse button. Accordingly, the above modified Ram obviously renders the above limitation (vi).
Regarding to the above limitations (vii), Simon discloses an electronic device comprising a reset button configured to reset the controller and disposed in the recess area on a top side of a housing assembly of the device (see at least Figs. 1A, 1B and 2; Col. 4:26-35; Col. 5:45-49, disclosing a reset button 58 configured to reset the microprocessor 40 [as the controller] and disposed in the recess area 11 on a top side of a housing assembly 4 of the device.) Thus, it would have been obvious for one of ordinary skill in the art to modify the above modified Ram computer mouse to include a reset button configured to reset the controller and disposed in the recess area on a top side of a housing assembly, in view of the teaching of the Simon reference, to improve the modified Ram computer mouse for the predictable result of allowing the user to reset the controller when necessary.
Accordingly, the above modified Ram computer mouse includes the reset button configured to reset the controller and disposed in the recess area on the top side of the housing assembly of the computer mouse, but still fails to teach “the reset button is flush with a bottom side of a housing assembly”, as claimed.
However, Devroy discloses an electronic device comprising a reset button (21; Fig. 1) either recessed into the housing assembly (i.e., positioned in the recess area of the housing assembly) or being flush with a side of the housing assembly, providing the same benefit of protecting against inadvertent operation of the reset button (see at least ¶ 21.)
The above modified Ram computer mouse includes the reset button disposed in the recess area on the top side of the housing assembly of the computer mouse, but fails to teach “the reset button is flush with the bottom side of the housing assembly”, as claimed. Devroy discloses an electronic device comprising the reset button either disposed in the recess area on the side of the housing assembly or being flush with the side of the housing assembly, providing the same benefit of protecting against inadvertent operation of the reset/second button. Thus, it would have been obvious for one of ordinary skill in the art to modify the above modified Ram computer mouse to dispose the reset button being flush with the side of the housing assembly of the computer mouse, as desired, in view of the teaching of the Devroy reference, to obtain the same predictable result of protecting against inadvertent operation of the first/reset button.
Accordingly, the above modified Ram computer mouse includes the reset button configured to reset the controller and being flush with the top side of the housing assembly, but still fails to teach “the reset button is flush with a bottom side of a housing assembly,” as claimed.
However, Gunsch discloses a portable electronic device comprising a reset button [35] positioned in a bottom side of a housing assembly [a housing assembly including at least elements 20, 30] (see at least Figs. 3, 4A; ¶ 59.)
Further, a change in location is generally recognized as being within the level of ordinary skill in the art, see In re Japikse, 86 USPQ 70 (CCPA 1950).
Therefore, it would have been obvious to a person of ordinary skill in this art to relocate the reset button of the above modified Ram being flush with the bottom side of a housing assembly, as desired as claimed, since a such modification would have involved a mere change in the location of the reset button of the above modified Ram, to obtain the same predictable result of resetting the controller (as taught by Simon as discussed above) while protecting against inadvertent operation of the reset button (as taught by Devroy as discussed above.)
Accordingly, the above modified Ram obviously renders all limitations of this claim.
As per claim 2, the above modified Ram obviously renders the power supply including a supply regulation technology (see the discussion in the rejection of claim 1, whereat the Ram solar charging technology corresponds to a supply regulation technology or the wireless inductive charging technology (taught by Yuan) corresponds to a supply regulation technology.)
As per claim 3, the above modified Ram obviously renders a tracking device to control navigation in a graphical user interface presented by a plurality of software applications controllable by the computer mouse. a tracking device (see Ram Fig. 3; ¶ [0243]:6-10, disclosing a bottom-mounted motion sensor 103 [as the tracking device] controlling cursor-pointing navigation in a graphical user interface presented by a plurality of software applications controllable by the computer mouse.)
As per claim 4, the above modified Ram obviously renders the tracking device being a laser sensing device (Ram ¶ 358.)
As per claim 6, the above modified Ram computer mouse still fails to teach “a second button positioned in a hole of a housing assembly of the computer mouse, wherein a depression of the second button forces the computer mouse to re-establish a factory setting,” as claimed.
However, Gunsch further discloses a button [35] positioned in a hole [34] of a housing assembly (including at least elements 20, 30) of the device, wherein a depression of the button forces the device to re-establish a factory setting, necessary in the extreme case where the system cannot be accessed any other way (see at least Figs. 1-3; ¶¶ 57-59.) Thus, it would have been obvious for one of ordinary skill in the art to modify the above modified Ram computer mouse to further include a [second] button configured to re-establish a factory setting, in view of the teaching of the Gunsch reference, to further improve the modified Ram computer mouse for the predictable result of allowing the user to re-establish a factory setting, necessary in the extreme case where the system cannot be accessed any other way.
As per claim 8, the above modified Ram, as discussed in the rejection of claim 1, obviously renders: detecting a selection of an input device of the computer mouse associated with the macros and providing the macros to a video gaming application at a computer device responsive to detecting the selection of the input device (see Tan at least Figs. 1-4, 17; ¶¶ 37, 38, 41-44, disclosing a computer executing a software program to generate macros associated with the buttons or buttons 1-7 of the mouse and including a sequence of keystroke commands from the computer device for the software application including a video gaming application [see at least ¶ 4] and to associate the macros with the buttons of the computer mouse; at ¶¶ 7, 35, 38, disclosing to store the macros and their associations in the memory of the computer mouse.)
As per claim 9, the above modified Ram discloses that, wherein the operations further comprise: detecting a tactile contact of a plurality of buttons, wherein the input device of the computer mouse includes the plurality of buttons (Ram at least Fig. 101; ¶ 118, discussing a plurality of buttons being perceptible by touch and a tactile contact of a button for switching the operational parameters; Ram Fig. 53a showing a menu of operational parameters; Sangster Fig. 1; ¶ 24; ¶ 26, disclosing detecting a contact of a plurality of DPI selection buttons 130-150, wherein the input device of the computer mouse include the plurality of buttons); transitioning between the operational parameters responsive to said detection of said tactile contact (Sangster ¶ 24; ¶ 26, disclosing transitioning between the operational parameters, corresponding to the plurality of DPI selection buttons 130-150, responsive to said detection of tactile contact); and adjusting the operations of the computer mouse according to the transition (Sangster ¶ 24; ¶ 26, disclosing adjusting operations of the computer mouse according to the transition.)
As per claim 10, the above modified Ram obviously renders the operations further comprising: receiving an input associated with a selection of one element of the input device, wherein the input device comprises at least one of a plurality of buttons and a scroll wheel (see Tan Fig. 4 shows example macros associated with buttons.)
As per claim 11, the above modified Ram obviously renders the operations further comprising:
detecting from the input the association with the macro (see Tan at least ¶ 35; ¶ 43, disclosing a specific/master key programmed to associate with the user-defined and programed macro corresponding to a series/sequence of keystrokes and the operation comprising detecting from the input to the specific/master key the association with the macro;)
retrieving a sequence associated with the macro from the memory (see Tan at least ¶ 38, disclosing to the sequence associated with the macro stored in the memory such as EEPROM of the mouse input device; Tan ¶ 35 or ¶ 43, disclosing to retrieve and transmit the sequence associated with the macro from the memory to the computing device;) and
transmitting the sequence to the computer device (Tan ¶ 35 or ¶ 43, disclosing to retrieve and transmit the sequence associated with the macro from the memory to the computing device.)
As per claim 12, the above modified Ram, as discussed in the rejection of claim 1 above, obviously renders a non-transitory computer-readable storage medium, comprising computer instructions (Ram ¶ 220; ¶ 364; Sangster ¶ 17) which, responsive to being executed by a processor, cause the processor to perform operations recited in this claim. See the discussion in the rejection of claim 1 above for similar limitations. Ram further discloses: presenting, at the navigation device, a plurality of scrollable options to select a profile from the plurality of profiles to select program settings for the computer mouse without assistance from the computer device communicatively coupled to the computer mouse (see Ram at least Figs. 98A-99B and ¶¶ 465-468, specifically ¶ 467:4-10 and ¶ 468: last 4 lines, disclosing presenting, at the computer mouse, a plurality of scrollable choices/options including GUI objects, icons, or items 1618 to select a profile from the plurality of profiles to select program settings for the computer mouse without assistance from the computer device communicatively coupled to the computer mouse; also see Ram ¶¶ 227-228, disclosing presenting, at the computer mouse (¶ 227:4-7, disclosing a menu list displayed on the built-in integrated display for selection), a plurality of options, such as an option to select one of a displayed list of network devices (see ¶ 227) as a network device profile, an option to select one of a displayed list target devices (see Ram ¶ 228; also Figs. 53a, 53b) as a target device profile; also see Ram Figs. 47, 53, 55, 56 for other profiles associated with the operational parameters of the mouse, such as the cursor velocity profile set in Fig. 47, the Trackpoint setting profile set in Fig. 55, or the top and bottom sensor function profile set in Fig. 56.) Note the computer mouse of claim 1 as a navigation device of this claim.
As per claim 13, the above modified Ram obviously renders the navigation device being a computer mouse (Ram, at least Fig. 16, disclosing the computer mouse as the navigation device.)
As per claim 14, see the discussion in the rejection to claim 9 for similar limitation. Note the computer mouse of claim 9 as a navigation device of this claim.
As per claim 15, the above modified Ram obviously renders that, wherein the operations further comprise transitioning between at least two movement count resolutions responsive to the detection of the tactile contact, wherein each of the at least two movement count resolutions determine a movement count reported to the computer device communicatively coupled to the navigation device (Sangster Fig. 4; ¶ 24; ¶ 26, disclosing the operations further comprising transitioning between three two movement count resolutions responsive to the detection of the tactile contact, wherein each of the three movement count resolutions determine a movement count reported to the computer device communicatively coupled to the navigation device).
As per claim 17, the above modified Ram, as discussed in the rejection of claim 1 above, obviously renders a method comprising all steps of this claim and the navigation device (note that the computer mouse of claim 1 corresponds to the navigation device of this claim) further includes a light-emitting device [1472] located at a top surface of a housing assembly of the navigation device (see Ram at least Fig. 69.) See the discussion in the rejection of claim 1 and/or claim 12 above for similar limitations.
As per claim 18, the above modified Ram obviously renders: wherein the navigation device comprises one of a computer mouse, a joystick, a gaming console controller, a keyboard, or a headset (Ram, at least Fig. 16, disclosing the computer mouse as the navigation device.) Ram further exemplifies the computer mouse including two rechargeable batteries [1754], which can be removable from the computer mouse and disposable (Fig. 118; ¶¶ 427, 488-489.) Furthermore, Official Notice is taken that the rechargeable batteries being replaceable to allow the user to replace with the new batteries are well-known and expected in the art. Therefore, it would have been obvious to a person of ordinary skill in the art to recognize that two rechargeable batteries of RAM are replaceable because Ram, discussed above, discloses two rechargeable batteries, which can be removable from the computer mouse and disposable.
Moreover, a change in size or numbers was judicially recognized as being within the level of ordinary skill in the art, In re Larson, 340 F.2d 965,968 (CCPA 1965); In re Dulberg, 289 F.2d 522, 523 (CCPA 1961); In re Rose, 105 USPQ 237 (CCPA 1955); and In re Reven, 156 USPQ 679 (CCPA 1968). Therefore, while Ram exemplifies the computer mouse including two rechargeable and replaceable batteries and may not exemplify the computer mouse including four or more rechargeable and replaceable batteries, a person of ordinary skill in the art would have modified the modified computer mouse of Ram to include four or more rechargeable and replaceable batteries in according to the power requirement of the computer mouse.
Accordingly, the above modified computer mouse of Ram obviously renders at least two first replaceable [and rechargeable] batteries and at least two second rechargeable [and replaceable] batteries.
As per claim 19, the above modified Ram obviously renders: wherein the navigation device includes a display that uses touch-sensitive display technology (see RAM at least ¶ 233, ¶ 268.)
As per claim 21, the above modified Ram obviously renders: wherein the tethered connection is based on a use of a Universal Serial Bus (USB) cable (see Ram at least any of ¶¶ 9, 14, 142, 176, 196, 211, disclosing a USB cable connection between the computer mouse and a computing device.)
As per claim 22, the above modified Ram obviously renders the specific movement including a circle (see the discussion in the rejection of claim 1; or see Coe at least ¶ 6, ¶ 19, disclosing a specific movement including an angular motion as a circular motion.)
As per claim 23, Ram disclose the computing device including a cellular phone (see at least ¶ 413.)
Claim 16 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ram in view of Yuan, Sangster, Yasutake, Tan, Coe, Simon, Devroy, and Gunsch, as applied to claim 12, and further in view of Frulla et al. (US 6,424,357; hereinafter Frulla.)
As per claim 16, Ram further discloses: wherein the navigation device comprises a headset served as a digital voice recorder (see Ram Figs. 28-29; ¶¶ 293-296, disclosing a headset 360 incorporated into the navigation device), wherein the operations further comprise detecting an input from a microphone [362; Fig. 29] associated with the navigation device (see Ram at least ¶ 251, disclosing: detecting an input from a microphone associated with the navigation device,) and wherein the button input command is used as a selection of one of the scrollable options (see at least ¶¶ [465-468.)
Accordingly, the above modified Ram obviously renders all limitations of this claim except for “the input from the microphone comprises a voice command as a selection of one of the scrollable options.”
However, in the same field of endeavor, Frulla teaches a headset including a microphone (31; Fig. 1,) wherein the input from the microphone comprises a speech/voice command as a selection of one of the options (see Figs. 1 and 2; Col 8:9-39.) Frulla further teaches that the use of a voice command allows the device to be used in hostile environments where the operation of a conventional mouse would not be recommended (Frulla Col 3:50-53.) Thus, it would have been obvious for one of ordinary skill in the art to utilize the Ram microphone for receiving a voice command as a selection of one of the scrollable options, in view of the teaching in the Frulla reference, to improve the modified Ram navigation device for the predictable result of allowing the user to input a voice command where the operation of the mouse would not be recommended.
Claim 16 is rejected, in the alternative, under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ram in view of Yuan, Sangster, Yasutake, Tan, Coe, Simon, Devroy, and Gunsch, as applied to claim 12, and further in view of Woolf et al (US 2009/0327888 A1; hereinafter Woolf.)
As per claim 16, Ram further discloses: wherein the navigation device comprises a headset served as a digital voice recorder (see Ram Figs. 28-29; ¶¶ 293-296, disclosing a headset 360 incorporated into the navigation device), wherein the operations further comprise detecting an input from a microphone [362; Fig. 29] associated with the navigation device (see Ram at least ¶ 251, disclosing: detecting an input from a microphone associated with the navigation device,) and wherein the button input command is used as a selection of one of the scrollable options (see at least ¶¶ [465-468.)
Accordingly, the above modified Ram obviously renders all limitations of this claim except for “the input from the microphone comprises a voice command as a selection of one of the scrollable options.”
However, in the same field of endeavor, Woolf teaches a headset including a microphone (31; Fig. 1,) wherein the input from the microphone comprises a speech/voice command as a selection of one of the options (see Fig. 1; ¶¶ 25, 28.) Thus, it would have been obvious for one of ordinary skill in the art to utilize the Ram microphone for receiving a voice command as a selection of one of the scrollable options, in view of the teaching in the Woolf reference, to improve the modified Ram navigation device for the predictable result of providing the user with the option of using a voice command as a selection of one of the scrollable options.
Claim 20 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ram in view of Yuan, Sangster, Yasutake, Tan, Coe, Simon, Devroy, and Gunsch, as applied to claim 17, and further in view of Wouters et al. (US 2006/0055683 A1; hereinafter Wouters.)
As per claim 20, Ram, as discussed in the rejection of claim 19, discloses the display using touch-sensitive display technology (see the rejection of claim 19; or see RAM at least ¶ 233, ¶ 268) and the menu managed on the display (see RAM at least Figs. 53A, 98A; ¶ 235; ¶ 465.) The above modified Ram is silent to “wherein the detecting is done via a menu that is managed by tactile touch of a stencil, and wherein the stencil is insertable and removable from a housing assembly of the navigation device,” as claimed.
However, in the same field of endeavor of handheld devices, as the navigation devices, provided with a touch screen display (see at least ¶ 2, ¶ 18, disclosing various handheld devices as the navigation devices,) Wouters discloses a navigation device (see Fig. 1; ¶ 2; ¶ 18, disclosing a navigation device 1) comprising a touch screen display (see at least Fig. 1; ¶ 2; ¶ 18, disclosing a display with a UI touch screen 3;) and a stencil (2) being insertable and removable from a housing assembly of the navigation device (see at least Fig. 2; ¶ 20, disclosing a stylus 2 being insertable and removable from a stylus housing 9 of the housing assembly of the device,) wherein the detecting is done via a menu that is managed by tactile touch of the stencil (see at least ¶ 18 … a pen-like stylus to actuate menu items shown on a display screen of the device by touching an icon appearing on the screen …)
The above modified Ram, as discussed above, discloses the touch-sensitive display, but is silent to a stencil and limitations associated with the stencil, as claimed. Wouters, as discussed above, remedies for the deficiency of the above modified Ram and further teaches the stylus used for at least actuating menu items, interacting with applications, and inputting to the device by writing or drawing on the display screen directly (see at least ¶ 18.) Thus, it would have been obvious for one of ordinary skill in the art to modify the above modified Ram navigation device to further include a stencil/stylus, in view of the teaching of the Wouters reference, to improve the modified Ram navigation device for the predictable result of at least actuating menu items, interacting with applications, and inputting to the device by writing or drawing on the display screen directly.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-4, 6, 8-21 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-7, 9-13, 15, 16 and 18-20 of U.S. Patent No. 11,442,557 B2.
As per claims 1-4, 6, and 8-21, although the claims at issue are not identical, they are not patentably distinct from each other because limitations of claims 1-4, 6 and 8-21 of the instant application are contained in the above patent claims and these claims are thus an obvious variation. See MPEP §§ 804. These claims of the instant application therefore are not patentable distinct from the earlier patent claim and as such is unpatentable for obvious-type double patenting.
As per claim 23, the above patent claims recite the computer device, but is silent to the computing device including a cellular phone. Official Notice is taken that both the concept and the advantages of associating a navigation device with the computing device including a cellular phone in accordance with a particular application are well-known and expected in the art. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the invention was made to include the cellular phone in the computer device of the patent claims in according to the particular application as generally known by a person of ordinary skill in the art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Jimmy H Nguyen whose telephone number is (571) 272-7675. The examiner can normally be reached on Monday-Friday 8:30AM-6PM.
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/Jimmy H Nguyen/
Primary Examiner, Art Unit 2626