DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in response to the communication filed 10/1/2025.
Response to Arguments
Applicant's arguments filed 10/1/2025 have been fully considered but they are not persuasive.
With regard to the arguments on page 5,
Applicant argues that RYOSEUKE (CN 101315569 A) in view of Zeng et al. (Zeng) (US 2023/0090427) and Groenefeld (DE 102007001699 A1) do not disclose that the magnet defines a receptacle configured to receive a distal end of an actuator arm, nor the specific way in which this is accomplished in the present application. The Examiner respectfully disagrees.
PNG
media_image1.png
416
686
media_image1.png
Greyscale
To applicant’s first point, as seen above, RYOSEUKE expressly disclose a receptacle (opening) in the magnet 601 that is configured to receive a moving arm that moves the magnet relative the sensor 605. The Examiner has previously explained this in the prior rejection, and applicant, respectfully, has not addressed this nor explained why the above noted opening in the magnet cannot reasonably be considered a receptacle as claimed.
To applicant’s second point, the Examiner respectfully notes that there is no requirement that the prior art implement any claim feature in the same was as disclosed by applicant, or solve or attempt to solve the same problem as applicant. For example, as explained in MPEP 2144(IV), “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).” Prior art references are only required to teach the broadest reasonable interpretation of the claim features, in light of the disclosure, but without importing any limitation from the disclosure. The prior art reasonably discloses all claim features, in the combination, and therefore reasonably disclose the claims.
Applicant then argues that the new limitation that the magnet and hall effect sensor are arranged in a fixed and controlled relationship allowing for drop-in replacement for a game controller potentiometer further distinguishes claim 1 from the prior art. The Examiner respectfully disagrees.
First, the Examiner respectfully notes that the instant amendment introduces new matter. The magnet and Hall effect sensor are not in a “fixed” relationship because the magnet is expressly disclosed, and in fact required to move relative to the sensor. Without relative movement between the magnet and sensor, nothing can be detected. While applicant may intend the term “fixed” to mean that the distance between the sensor and magnet remains constant, such a feature is already recited in the claim. Claiming that two components are in a fixed relationship reasonably captures scope beyond these two elements having a constant distance between them, because the term “fixed” means “fastened, attached, or placed so as to be firm and not readily movable; firmly implanted; stationary; rigid” per https://www.dictionary.com/browse/fixed. However, the claimed magnet and hall sensor together do not meet this definition, because there is a required relative movement between them.
That stated, to the extent that this phrase is interpreted to mean that the distance between the sensor and magnet remain constant, the prior art discloses such a feature, as RYOSEUKE discloses a magnetic sensor spaced by a constant distance from the magnet. In fact, in RYOSEUKE, the only primary difference in this claim feature is that the sensor is a GMR instead of a Hall element, but the basic function of having a magnet rotating relative to a magnetic sensor while maintaining a constant distance therebetween is disclosed in the prior art and functions in the same manner as applicant.
Lastly, with regard to the “drop-in replacement” feature, the Examiner respectfully notes that applicant does not reasonably provide any guidance or explanation in the disclosure as to the manner that this feature is implemented or to what extent it is meant.
PNG
media_image2.png
481
618
media_image2.png
Greyscale
PNG
media_image3.png
494
545
media_image3.png
Greyscale
As best understood, what applicant is referring to with the drop-in replacement recitation is that the sensing configuration (18) in the instant application can be replaced with the version seen in Figure 5 of the instant application. Applicant does not reasonably explain whether any of the terminals are soldered or otherwise permanently connected, or if they are temporarily connected, such as by way of sockets.
That stated, the broadest reasonable and best interpretation of the disclosure for this claim feature is that the sensing configuration can be “dropped-in” and thus used with the game controller device. However, the mere fact that the prior art, in the combination, is already using the claim configuration demonstrates that it is reasonably capable of the claim feature, because it has already been “dropped-in” as it is already being used. Applicant does not reasonably present any argument or explanation as to what applicant means by claiming that the sensor and magnet can be a “drop-in replacement,” nor present any argument as to why the prior art is not reasonably capable of including such a feature. As further evidenced by Figures 3 and 5, the sensing configuration is one unit/module, and this module is attached to a rotating shaft of the game controller . As such, it both is reasonably capable of being dropped-in, and in fact, as best understood, is removable and replicable, thus further disclosing the claim feature. As such, the Examiner respectfully disagrees with applicant.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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 1-3, 5, 7, 8, 10-12, and 14 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to Claim 1,
The phrase “the magnet and hall effect sensor are arranged in a fixed and controlled relationship allowing for drop-in replacement for a game controller potentiometer” on the last two lines introduces new matter and lacks proper written description.
As to new matter,
The magnet and Hall effect sensor are not in a “fixed” relationship because the magnet is expressly disclosed, and in fact required to move relative to the sensor. Without relative movement between the magnet and sensor, nothing can be detected. While applicant may intend the term “fixed” to mean that the distance between the sensor and magnet remains constant, such a feature is already recited in the claim. Claiming that two components are in a fixed relationship reasonably captures scope beyond these two elements having a constant distance between them, because the term “fixed” means “fastened, attached, or placed so as to be firm and not readily movable; firmly implanted; stationary; rigid” per https://www.dictionary.com/browse/fixed. However, the claimed magnet and hall sensor together do not meet this definition, because there is a required relative movement between them. As such, this phrase introduces new matter.
As to lacking proper written description,
Applicant claims that the magnet and sensor have an arrangement that allows for a drop-in replacement, but where applicant does not reasonably provide any explanation to demonstrate what such a feature means or the manner in which this feature is implemented.. The only explanation provided by applicant for this feature is that the sensor assembly is configured “to be a drop-in replacement for existing game controller potentiometers 18 (as shown in FIG. 2), allowing for consumers or manufacturers to use this design with their existing controllers” on the last three lines of page 8. However, this does not reasonably explain what applicant means by claiming that the configuration/arrangement “allows for” a drop-in replacement as claimed, or the manner in which it is implemented. For example, applicant does not explain if this arrangement is intended to have the terminals at the bottom of the assembly plug-in to sockets, and thus can only be used by game controllers that have such a plug-in arrangement, or if applicant intends this phrase to include this game controller devices that permanently connect the terminals via soldering, but where the sensing arrangements can be “unsoldered” and thus still allow for a drop-in replacement. Applicant further does not explain whether such a feature merely refers to the manner in which the sensing assembly is attached to the shaft, such as having the arrangement being attachable to a shaft for rotation detection purposes. While it is acknowledged that this device can be used with game controller that has a rotating axle/arm in the manner disclosed, the original disclosure does not reasonably demonstrate what part of the sensing arrangement gives the arrangement its “drop-in” ability, nor provide any explanation as to the manner in which the arrangement is dropped-in. As such, this phrase lacks proper written description.
As to Claims 2-3, 5, 7, 8, 10-12, and 14,
These claims stand rejected for incorporating and reciting the above rejected subject matter from Claim 1 and therefore stand rejected for the same reasons.
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.
Claims 1-3, 5, 7, 8, 10-12, and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to Claim 1,
The phrase “the magnet and hall effect sensor are arranged in a fixed and controlled relationship allowing for drop-in replacement for a game controller potentiometer” on the last two lines is indefinite.
1) It is unclear what applicant means by reciting that the magnet and hall effect sensor are arranged in a fixed and controlled relationship. The magnet and Hall effect sensor are not in a “fixed” relationship because the magnet is expressly disclosed, and in fact required to move relative to the sensor. Without relative movement between the magnet and sensor, nothing can be detected. While applicant may intend the term “fixed” to mean that the distance between the sensor and magnet remains constant, such a feature is already recited in the claim. Claiming that two components are in a fixed relationship reasonably captures scope beyond these two elements having a constant distance between them, because the term “fixed” means “fastened, attached, or placed so as to be firm and not readily movable; firmly implanted; stationary; rigid” per https://www.dictionary.com/browse/fixed. However, the claimed magnet and hall sensor together do not meet this definition, because there is a required relative movement between them. As such, it is unclear how the term “fixed” should be interpreted in light of the disclosure. For the purpose of compact prosecution, the Examiner is interpreting the above phrase to mean that the magnet and sensor can movement relative to each other, but that such movement is in a specific and controlled manner.
2) Applicant claims that the magnet and sensor have an arrangement that allows for a drop-in replacement, but where applicant does not reasonably provide any explanation to demonstrate what such a feature means. The only explanation provided by applicant for this feature is that the sensor assembly is configured “to be a drop-in replacement for existing game controller potentiometers 18 (as shown in FIG. 2), allowing for consumers or manufacturers to use this design with their existing controllers” on the last three lines of page 8. However, this does not reasonably explain what applicant means by claiming that the configuration/arrangement “allows for” a drop-in replacement as claimed, or the manner in which it is implemented. For example, applicant does not explain if this arrangement is intended to have the terminals at the bottom of the assembly plug-in to sockets, and thus can only be used by game controllers that have such a plug-in arrangement, or if applicant intends this phrase to include this game controller devices that permanently connect the terminals via soldering, but where the sensing arrangements can be “unsoldered” and thus still allow for a drop-in replacement. While it is acknowledged that this device can be used with game controllers that have a rotating axle/arm in the manner disclosed, the original disclosure does not reasonably demonstrate what part of the sensing arrangement gives the arrangement its “drop-in” ability, nor provide any explanation as to the manner in which the arrangement is dropped-in. As such, the above phrase is indefinite because it is unclear if applicant intends the “drop-in replacement” phrase to mean that the sensing arrangement of one device can be replaced with another, if the sensing arrangement merely has to be useable with a game controller , or if applicant requires a more specific interpretation where the sensing arrangement is modular can be easily removed and replaced without any permanent attachment of the sensing arrangement. For the purpose of compact prosecution, the Examiner is interpreting the above phrase to mean that the sensing arrangement must be usable with a game controller and function as a potentiometer for that game controller.
As to Claims 2-3, 5, 7, 8, 10-12, and 14,
These claims stand rejected for incorporating and reciting the above rejected subject matter from Claim 1 and therefore stand rejected for the same reasons.
Claim Rejections - 35 USC § 103
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.
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 5, 7, 8, 10, 11, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over RYOSEUKE (CN 101315569 A) in view of Zeng et al. (Zeng) (US 2023/0090427) and Groenefeld (DE 102007001699 A1).
The cited locations from RYOSEUKE and Groenefeld come from the provided English machine translations.
As to Claims 1, 3, 8, and 14,
RYOSEUKE discloses A game controller game controller comprising a plurality of giant magnetoresistive sensor (GMR) assemblies, wherein each GMR assembly of said plurality of GMR assemblies including a sensor assembly for a game controller, said sensor assembly comprising: a housing (603) defining a hole (603b) (Figures 2,5); a magnet (601) inside the housing (Figures 2,5), wherein part of the magnet is polarized with one polarity, and another part of the magnet is polarized with the opposite polarity (Paragraph [0039] / note the magnet only has two poles and therefore reasonably discloses this feature); a substrate (604) attached to the housing (Figures 2,5), (Paragraph [0039]) a giant magnetoresistive sensor (GMR) (605) inside the housing and connected to the substrate (Figures 2,5), (Paragraph [0039]); and a signal communication structure (terminals 606) connected to the substrate and extending from the housing (Figures 2,3,5 / note that the terminals reasonably extend from the housing as the bent bottom portion extends from the bottom of the housing, and because the circular portion of the terminals are reasonably inside the housing), wherein the magnet defines a receptacle (601a) configured to receive a distal end of an actuator arm (403 or 506) of a game controller game controller and be rotated thereby such that the magnet is fixed to the distal end and a distance between each half of the magnet and the GMR sensor in a direction along a rotational axis of the magnet remains constant when the magnet is rotated by the actuator arm (Figures 2, 3, and 5), (Paragraph [0040] / note given the relative position between sensor (605) and magnet (601), no change in distance in the axial direction as claimed would occur in the same manner as disclosed by applicant), wherein the GMR sensor is configured to sense a rotational position of the magnet (Paragraphs [0038],[0039],[0050] / note rotation detection), wherein the signal communication structure is configured to communicate the rotational position of the magnet (Paragraphs [0038],[0050] / note the terminals 606 output the rotation detection result of the magnet), the magnet and GMR sensor are arranged in a fixed and controlled relationship allowing for drop-in replacement for a game controller potentiometer (Figures 3,5 / note the prior art discloses a substantially similar sensing arrangement as applicant, and one that is actually used with a game controller in a potentiometer manner, and thus reasonably discloses the claim feature both because it discloses the claim feature, and because it must be property of the system given the similarity to applicant’s device).
RYOSEUKE does not disclose the substrate is a PCB, a PCB inside the housing; the sensor is a Hall effect sensor instead of a GMR, each of the plurality of sensor assemblies are Hall effect sensor assemblies, and does not expressly disclose wherein half the magnet is polarized with one polarity, and another half of the magnet is polarized with the opposite polarity, the magnet is diametrically polarized, the magnet is round, the magnet and hall effect sensor are arranged in a fixed and controlled relationship allowing for drop-in replacement for a game controller potentiometer.
Zeng discloses the substrate is a PCB (212) inside the housing (211) (Figure 4),(Paragraph [0044]), a signal communication structure (214) connected to the PCB and extending from the housing (Figures 1,3 / note the wiring on the circuit extending out of the housing (Figure 4), the sensor is a hall effect sensor (213) that is configured to sense a rotational position of the magnet (33) and the signal communication structure is configured to communicate the rotational position of the magnet (Figures 4-6), (Paragraphs [0044],[0045]), the signal communication structure comprises pins (Figure 4), the signal communication structure comprises three through hole pins (Figure 4), each of the plurality of sensor assemblies are Hall effect sensor assemblies (Figure 1-4 / note assemblies 21 and 22), (Paragraphs [0044],0045]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify RYOSEUKE to include the substrate is a PCB, a PCB inside the housing; the sensor is a Hall effect sensor instead of a GMR, each of the plurality of sensor assemblies are Hall effect sensor assemblies, and the magnet and hall effect sensor are arranged in a fixed and controlled relationship allowing for drop-in replacement for a game controller potentiometer as taught by Zeng in order to advantageously provide the PCB with protection from the external environment to therefore minimize potential damage to the PCB, and in order to advantageously allow the signal sensed by the sensor to be used to determine the precise location of the game controller by way of a processor or be used by other processing to ensure that the device is operating as intended, and in order to advantageously utilize a sensor having a high dynamic range at a lower cost (Overview of Magnetic Field Sensor).
Groenefeld discloses a magnet where half the magnet is polarized with one polarity, and another half of the magnet is polarized with the opposite polarity (Figure 2), (Paragraphs [0005],[0006] / note the magnet can be disc shaped, and it is this shape being relied upon), the magnet is diametrically polarized (Figure 2), the magnet is round (Paragraph [0006]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify RYOSEUKE to include the magnet where half the magnet is polarized with one polarity, and another half of the magnet is polarized with the opposite polarity, the magnet is diametrically polarized, the magnet is round as taught by Groenefeld in order to advantageously utilize a simple structure for a magnet that allows for the an absolute position of the magnet to always be known, thus reducing cost, and to advantageously utilize a magnet configuration that can reduce detection error (Paragraph [0009] / note the reduction in error).
(Note: With regard to the above, the Examiner acknowledges that RYOSEUKE explains certain disadvantages of Hall sensors in paragraph [0006]. However, this is not considered a teaching away because such a statement amounts more to a non-preferred embodiment as opposed to disparaging the use of a Hall sensor. RYOSEUKE expressly discloses that Hall sensors are used for the exact same purpose as disclosed by RYOSEUKE, in that both GMR and Hall sensors are used for multi-directional input devices (see paragraph [0006]). If high position accuracy is required for their positioning, then such accuracy is clearly and reasonably available in the art as such a sensor is expressly disclosed by RYOSEUKE to be used in the art for the same purpose. In fact, what RYOSEUKE is really disclosing is a different mounting mechanism for a magnetic sensor and magnet that “ensures the positional accuracy of a magnet and a magnetic detection element constituting a magnetic sensor” (Paragraph [0008]). Note that magnet is mounted relative to the sensor in a different manner in RYOSEUKE as opposed to the prior art. Mounting the Hall sensor, in the combination, in the same manner as RYOSEUKE, would reasonably include the same positional accuracy implemented by RYOSEUKE, while also providing the well-known lower cost of a Hall sensor relative to a GMR (see the Conclusion section of Page 7 of the attached Overview of Magnetic Field Sensor document). The disclosure of RYOSEUKE is therefore really directed towards a more preferred embodiment using a GMR sensor as opposed to a Hall sensor, and does not reasonably teach away from the combination).
As to Claim 2,
RYOSEUKE discloses the housing defines the hole configured to receive the actuating arm of the game controller game controller (Figures 1-5).
As to Claim 5,
RYOSEUKE in view of Zeng and Groenefeld discloses wherein the magnet is configured to rotate along an axis that is perpendicular to a plane on which the hall effect sensor sits (Figures 1-5 of RYOSEUKE).
As to Claim 7,
RYOSEUKE in view of Zeng and Groenefeld discloses wherein the magnet is configured to rotate axially along its center axis adjacent the hall effect sensor and stays the same distance from the hall effect sensor (Figures 1-5 of RYOSEUKE).
As to Claim 10,
RYOSEUKE discloses wherein the housing defines the hole configured to receive the actuating arm of the game controller game controller (Figures 1-5), and wherein the magnet defines the receptacle configured to receive the actuating arm (Figures 1-5).
As to Claim 11,
RYOSEUKE discloses wherein the signal communication structure comprises pins (Figures 2,5).
As to Claim 12,
RYOSEUKE discloses wherein the signal communication structure comprises three through hole pins (Figures 2,5 / note there are four terminals / pins 606, and thus there must be four holes).
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 DAVID M. SCHINDLER whose telephone number is (571)272-2112. The examiner can normally be reached 8am-4:30pm.
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, Lee Rodak can be reached at 571-270-5628. 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.
DAVID M. SCHINDLER
Primary Examiner
Art Unit 2858
/DAVID M SCHINDLER/Primary Examiner, Art Unit 2858