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 .
Response to Amendment
The examiner acknowledge receipt of amendments/arguments filed 3/2/26. The arguments set forth are addressed herein below. Claims 1-29 are pending and Claims 21-29 are non-elected. Claims 21-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/2/26.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
The claim(s) recite(s) “A method comprising: performing in a game controller comprising a primary port, a secondary port, and a non-volatile memory storing a plurality of game controller profiles: using one of the plurality of game controller profiles to enable use of the game controller by a first computing device connected with the primary port; receiving a selection of a different one of the plurality of game controller profiles; and using the selected different one of the plurality of game controller profiles to enable use of the game controller by a second computing device connected with the secondary port.” (Claim 1) and “A game controller comprising: a first port; a second port; one or more processors; a non-transitory computer-readable medium; and program instructions stored on the non-transitory computer-readable medium that, when executed by the one or more processors, cause the one or more processors to perform functions comprising: in response to a first computing device being connected with the first port, sending a first set of descriptors to the first computing device to enable the first computing device to use the game controller; and in response to a second computing device being connected with the second port, sending a second set of descriptors to the second computing device to enable the second computing device to use the game controller” (Claim 10); and “A non-transitory computer-readable medium storing program instructions that, when executed by one or more processors of a game controller comprising primary and secondary ports, cause the one or more processors to perform functions comprising: dynamically changing a configuration of the game controller from a first configuration that allows the game controller to be used by a first computing device connected with the primary port to a second configuration that allows the game controller to be used by a second computing device connected with the secondary port.” (Claim 17). Each of the above underlined portions are related to managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) for selecting/changing and/or sending particular gaming controller configurations, profiles, and/or descriptors to allow the gaming controller to be used. Such steps pertain to organizing human activity.
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (particularly the technological environment of a gaming device and/or gaming system) (MPEP 2106.05 (h)).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. The recitations of utilization of a “gaming controller”, “port”, “non-volatile memory”, “computing device”, “processor”, and/or “non-transitory computer-readable medium” are recited at a level of generality and are merely invoked as tool to perform the used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility (the use of a computing device and/or generic components is merely illustrating the environment in which the abstract idea is practiced). These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. Taking the physical elements individually and in combination, the computer-based components perform purely generic computer-based functions that are silent in regards to clearly indicating how a computer aids method, controller, and/or medium to which a computer performs/implements the method, controller, and/or medium. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer, ’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
It is settled law that adding physical elements to an abstract idea will not amount to an “inventive concept" if the physical elements are well-known, routine and conventional elements and they perform their well-known, routine and conventional functions. TLI Communications LLC v. AV Automotive, L.L.C. (Fed Cir 2016):
Turning to the second step in our analysis, we find that the claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “‘well understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294). We agree with the district court that the claims’ recitation of a “telephone unit,” a “server”, an “image analysis unit,” and a “control unit” fail to add an inventive concept sufficient to bring the abstract idea into the realm of patentability. (Emphasis added by Examiner.)
On the question of preemption, the Federal Circuit has stated in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of DNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
Nor do the dependent claims 2-9, 11-16, and 18-20 add “significantly more” since they merely add to the claimed concepts relating to managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) under the grouping of Certain Methods of Organizing Human Activity. The dependent claims failing to place the claimed invention into a practical application or additional generic components of the dependent claims failing to amount to “significantly more” for the same reasons noted above.
Consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claim are not patent-eligible under 35 USC §101.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 4, 6, 10-11, 14, and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wong (US 2010/0041480).
Claim 1: Wong teaches a method comprising: performing in a game controller (combination of receiver 32/controller 10 of Fig. 1 ) comprising a primary port, a secondary port, and a non-volatile memory (¶ 16, 20) storing a plurality of game controller profiles (layouts and/or drivers): using one of the plurality of game controller profiles to enable use of the game controller by a first computing device connected with the primary port; receiving a selection of a different one of the plurality of game controller profiles; and using the selected different one of the plurality of game controller profiles to enable use of the game controller by a second computing device connected with the secondary port (¶ 3-9, 20, 23-25).
Claim 2: Wong teaches wherein the selection is received from a user interaction with the first computing device (¶ 23-24).
Claim 4: Wong teaches wherein the selection is received from an identification of the second computing device, wherein the identification is received from the second computing device via the secondary port (¶ 20, 23-24).
Claim 6: Wong teaches causing an output of a visual indicator of the game controller to change in response to the game controller being used with the second computing device (¶ 20, 23-24, Fig. 2).
Claim 10: Wong teaches a game controller (combination of receiver 32/controller 10 of Fig. 1) comprising: a first port; a second port; one or more processors; a non-transitory computer-readable medium (¶ 16, 20); and program instructions stored on the non-transitory computer-readable medium that, when executed by the one or more processors, cause the one or more processors to perform functions comprising: in response to a first computing device being connected with the first port, sending a first set of descriptors (different user input mappings for a first layout/configuration) to the first computing device to enable the first computing device to use the game controller; and in response to a second computing device being connected with the second port, sending a second set of descriptors (different user input mappings for a second layout/configuration) to the second computing device to enable the second computing device to use the game controller (¶ 3-9, 20, 23-31).
Claim 11: Wong teaches the controller further comprising a transceiver used at least by the second port (¶ 20, 23-24).
Claim 14: Wong teaches wherein the first and second set of descriptors comprising different user input device mappings (see above, ¶ 24-31).
Claim 17: Wong teaches a non-transitory computer-readable medium (¶ 16, 20) storing program instructions that, when executed by one or more processors of a game controller (combination of receiver 32/controller 10 of Fig. 1) comprising primary and secondary ports, cause the one or more processors to perform functions comprising: dynamically changing a configuration of the game controller from a first configuration that allows the game controller to be used by a first computing device connected with the primary port to a second configuration that allows the game controller to be used by a second computing device connected with the secondary port (¶ 3-9, 20, 23-25).
Claim 18: Wong teaches, wherein the configuration of the game controller is dynamically changed in response to a user input (¶ 23-24).
Claim 19: Wong teaches, wherein the configuration of the game controller is dynamically changed automatically in response to on an identification of the second computing device (¶ 20, 23-24).
Claim 20: Wong teaches, wherein the first and second configurations comprise different human interface device (HID) descriptors, user input device mappings, audio settings, and/or authentication protocols (see above, ¶ 24-31).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong (US 2010/0041480) in view of Yan (US 2015/0217191).
Claim 3: Wong teaches the above, but lacks explicitly suggesting wherein the selection is received from a position of a user-movable switch on the game controller. However, an analogous art of Yan teaches a type of game controller, wherein the game controller switches between or selects different configurations via selection received from a position of a user-movable switch on the game controller (¶ 25, 30-31, 33, 37, 50-51). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method, particularly the selection means thereof, of Wong in view of Yan with the user-movable selection means of Yan because such a modification would have yielded predictable results, namely, a means of selecting between various configurations in which at least Wong is intended (see above). Such a modification allows the selection means to be easily reachable on the device and not have an unreasonable likelihood of being accidently pressed while interacting with other inputs of the device (Yan - ¶ 33).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong (US 2010/0041480) in view of Vance (US 2006/0286943).
Claim 5: Wong teaches the above, but lacks explicitly suggesting receiving an update to the plurality of game controller profiles stored in the non-volatile memory in the game controller. Wong at least discloses a plurality of game controller profiles with different layouts and key mappings (¶ 24-31) and a need exists to make the game controller more adaptable to emulate controllers of different platforms (¶ 15). Furthermore, an analogous art of Vance teaches a similarly structured gaming controller, wherein the game controller receives updates to gaming profiles/configurations stored in non-volatile memory (¶ 41-45, 52-53). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified method of Wong with the update means of Vance because such a modification would have yielded predictable results, namely, a means of making the game controller more adaptable to a variety of gaming platforms in which at least Wong is intended (see above). Such a modification such a modification allows the gaming controller to be used with a variety on gaming platforms.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong (US 2010/0041480) in view of Tager (US 2018/0104574).
Claims 8-9: Wong teaches the above, in addition to the secondary port being configured to pass data (¶ 20), but lacks explicitly suggesting wherein the secondary port is configured to use a USB protocol and/or is configured to pass power. Wong at least teaches that the secondary port accommodates devices such as Xbox (¶ 15, 24) and the ports being compatible to the various computing devices (¶ 20). Furthermore, an analogous art of Tager teaches connection ports configured to use USB protocol and pass data and power (Abstract, ¶ 4, 35, 37-40, 45). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Wong with the connection port means of Tager because such a modification would have yielded predictable results, namely, a means of the game controller to communicate with different gaming platforms in which at least Wong is intended (see above, ¶ 20). Such a modification improves the overall compatibility of the game controller with different platforms (Tager - ¶ 3-7).
Claim(s) 13 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong (US 2010/0041480) in view of Wells (US 2018/0345130).
Claim 13: Wong teaches the above, but lacks explicitly suggesting wherein the first and second set of descriptors comprise different human interface device (HID) descriptors. Wong at least teaches providing different mappings of inputs via drivers for different gaming consoles (first and second set of descriptors) to translate the various inputs corresponding to the respective different gaming consoles (¶ 20, 23-30). An analogous art of Wells teaches that different human interface device (HID) descriptors are provided from gaming controllers via device drivers that correspond to different inputs thereof such that the inputs can be properly identified for processing and entry by the gaming device (¶ 34-35, 48-49, 51, 53, 55-57). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the gaming controller, particularly the descriptors, of Wong such that the descriptors include HID descriptors as taught by Wells because such a modification would have yielded predictable results, namely, a means of processing gaming inputs specific to particular gaming platforms in which at least Wong is intended (see above, ¶ 20). Such a modification defines the capabilities of the gaming controller for processing of gaming inputs (see above, ¶ 34-35).
The above, modification results in different hid descriptors due to the first and second set of descriptors being different for each corresponding gaming platform (see Wong - ¶ 20).
Claim 16: Wong teaches the above, but lacks explicitly suggesting wherein the first and second set of descriptors comprise different human interface device (HID) descriptors. Wong at least teaches providing different mappings of inputs via drivers for mimicking different gaming controllers specific to different gaming consoles (first and second set of descriptors) to translate the various inputs corresponding to the respective different gaming consoles (¶ 20, 23-30). An analogous art of Wells teaches that descriptors are provided from gaming controllers via device drivers that correspond to vendor specific device protocols (authentication protocols) (¶ 34-35, 48-49, 51, 53, 55-57, 85, emphasis on ¶ 85). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the gaming controller, particularly the descriptors, of Wong such that the descriptors vendor specific device protocols (authentication protocols) as taught by Wells because such a modification would have yielded predictable results, namely, a means of processing gaming inputs mimicking gaming controllers specific to particular gaming platforms in which at least Wong is intended (see above, ¶ 20). Such a modification would prevent the creation of unwanted interfaces (Wells - see above, ¶ 85).
The above, modification results in different authentication protocols due to the first and second set of descriptors mimicking different gaming controller devices corresponding gaming platform (see Wong - ¶ 20).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong (US 2010/0041480)
Claim 15: Wong teaches the above, but lacks explicitly suggesting wherein the first and second set of descriptors comprise different audio settings. Wong at least teaches the type of descriptors comprising layouts and/or mapping inputs corresponding to the layouts (see above). Furthermore, applicant fails to disclose that having the first and second descriptors comprise different audio settings solve any stated problem, provides an advantage, or is for any particular purpose. Moreover, it appears that the first and second descriptors of Wong, or applicant’s invention, would perform the same function of allowing the first or second computing device to use the game controller upon being connected to the corresponding first or second port, regardless of the type of descriptors. Therefore, it would have been prima facie obvious to modify Wong to obtain the invention as specified in claim 15 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Wong.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Please see attached PTO-892.
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/TRAMAR HARPER/Primary Examiner, Art Unit 3715
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