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 .
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
DETAILED ACTION
This is a Final Action responsive to communications: Applicant’s Response filed on 12/31/2025. Applicant’s Response at least includes an Amendment to the Claims and Remarks. Applicant’s Response has been entered and made of record.
In light of the Amendment to the Claims, independent claim 1 was amended; independent claims 8 and 15 were reinstated and amended; dependent claims 2-5, 9, 10, and 12 were reinstated; new claims 21, 29-31, 33-35, 38, and 39 were canceled; and new claims 22-28, 32, and 37 were amended. Therefore, claims 1-5, 8-10, 12, 15, 22-28, 32, 36, and 37 are currently pending in the application. Claims 1, 8, and 15 are independent claims.
The objection to claims 28, 33, and 37 (see: Non-Final Action, pp. 3-4) has been withdrawn as necessitated by the Amendment to the Claims.
The rejection of claims 1 and 21-39 under 35 U.S.C. 251 as failing the original patent requirement (see: Non-Final Action, pp. 9-12) has been withdrawn as necessitated by the Amendment to the Claims.
The rejection of claims 1 and 21-39 under 35 U.S.C. 112(a) as failing to comply with the written description requirement (see: Non-Final Action, pp. 12-14) has been withdrawn as necessitated by the Amendment to the Claims.
The rejection of claims 29, 30, 36, and 37 under 35 U.S.C. 112(b) as being indefinite (see: Non-Final Action, pp. 14-15) has been withdrawn as necessitated by the Amendment to the Claims.
Reissue
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 11,353,967 B2 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Claim Objections
Claims 22 and 23 are objected to because of the following informalities:
First, claims 22 and 23 are objected to under 37 CFR 1.75(b) as being substantial duplicates of each other. 37 CFR 1.75(b) notes that “More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.” Therefore, when two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper to object to said claims. In the instant case, dependent claims 22 and 23 appear to be exact duplicates of each other. Similar to dependent claim 25, the Examiner suggests amending “a linear function” in dependent claim 23 to state “a non-linear function” (emphasis added).
Second, line 4 of dependent claims 22 and 23 states “causing virtual object to move along the pointing vector such that a change in distance of” wherein the Examiner believes said line should be changed to “causing the virtual object to move along the pointing vector such that a change in distance of” (emphasis added).
Appropriate correction is required.
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 § 2146 et seq. 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.
Representative independent claims 1, 8, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over independent claims 1, 8, and 13, respectively, of U.S. Patent No. 12,079,388. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 8, and 13 of U.S. Patent No. 12,079,388 contain every element of claims 1, 8, and 15 of the instant application and thus anticipate the claims of the instant application. The Examiner notes that as currently claimed, the inertial measurement unit of claims 1, 8, and 15 of the instant application is functionally equivalent to the state sensing module of claims 1, 8, and 13 of U.S. Patent No. 12,079,388. Claims 1, 8, and 15 of the instant application therefore are not patentably distinct from the patent claims and as such are unpatentable over obvious-type double patenting. An application claim is not patentably distinct from a patent claim if the application claim is anticipated by the patent claim.
Claim Rejections - 35 USC § 251
Claims 1-5, 8-10, 12, 15, 22-28, 32, 36, and 37 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02(II)):
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.”
(Step 1: MPEP 1412.02(II)(A)) In the instant case and by way of the Amendment to the Claims, Applicant seeks to broaden original independent patent claims 1, 8, and 15 in this reissue at least by deleting/omitting the patent claim language that requires:
“tracking movement of a pointing vector…by:
detecting whether the pointing controller is indoors or outdoors; and
adjusting parameters of the arm model depending on whether the pointing controller is indoors or outdoors”
(independent claim 1)
“tracking movement of a pointing vector…by:
detecting whether a user of the pointing controller is sitting or standing; and
adjusting parameters of the arm model depending on whether the user of the pointing controller is sitting or standing”
(independent claim 8)
“tracking movement of a pointing vector…by:
detecting a fatigue level associated with a user of the pointing controller; and
adjusting parameters of the arm model depending on detected fatigue level”
(independent claim 15)
(Step 2: MPEP 1412.02(II)(B)) The record of the prior 17/059,183 application prosecution history indicates that in a Response filed 12/14/2021, Applicant at least amended then pending representative independent claim 1 (shown below) in an attempt to overcome a rejection under 35 U.S.C. 103 (i.e., SMITH in view of BEACH). The Examiner notes that then pending independent claims 9 (now independent patent claim 8) and 17 (now independent patent claim 15) were similarly amended to include the corresponding limitations highlighted above.
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In Remarks filed concurrently with the Response (see: Remarks, p. 11), Applicant at least argued/noted:
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Subsequent to Applicant’s Response, a Notice of Allowability was mailed on 02/03/2022 whereby claims 1-5, 7-14, 16-17, 22-23, and 37-39 were indicated as allowed. The Notice of Allowability included an Examiner’s Statement of Reasons for Allowance indicating that the “Claims are allowed in view of Applicant’s amendments, submissions, and remarks filed 12/14/2021.”
Subject matter is previously surrendered during the prosecution of the original application by reliance on an amendment to the claims and/or an argument made by applicant that a limitation(s) of the claim(s) defines over the art. It is noted that a patent owner (reissue applicant) is bound by the amendment and/or argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the amendment and/or argument in allowing the claims. Therefore, in the instant case the added and/or argued claim limitations of: (1) “tracking movement of a pointing vector…by: detecting whether the pointing controller is indoors or outdoors; and adjusting parameters of the arm model depending on whether the pointing controller is indoors or outdoors”, (2) “tracking movement of a pointing vector…by: detecting whether a user of the pointing controller is sitting or standing; and adjusting parameters of the arm model depending on whether the user of the pointing controller is sitting or standing”, and (3) “tracking movement of a pointing vector…by: detecting a fatigue level associated with a user of the pointing controller; and adjusting parameters of the arm model depending on detected fatigue level” are surrendered subject matter and some of the broadening of amended independent claims 1, 8, and 15, as noted above, is clearly in the area of the surrendered subject matter.
(Step 3: MPEP 1412.02(II)(C)) When analyzing a reissue claim for the possibility of impermissible recapture, there are two different types of analysis that must be performed. If the reissue claim “fails” either analysis, recapture exists. First, the reissue claim must be compared to any claims canceled or amended during prosecution of the original application. It is impermissible recapture for a reissue claim to be as broad as, or broader in scope than any claim that was canceled or amended in the original prosecution to define over the art. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture.
In light of the Amendment to the Claims, the Examiner notes that the reissue claims were not materially narrowed in other respects (i.e., the new limitations are not related to the same characteristic or concept as the surrendered subject matter), so that the claims may not have been enlarged, and hence avoid the recapture rule.
In light of the Amendment to the Claims, the Examiner also notes that the surrendered subject matter has not been entirely eliminated from claims 1, 8, and 15 in the instant reissue application (e.g., the limitation “tracking movement of a pointing vector…detecting…the pointing controller…and adjusting parameters of the arm model” is still claimed), but rather it has been made less restrictive (i.e., the newly claimed “an operating condition” is a broader version of the claimed “indoors or outdoors”, “sitting or standing”, and “fatigue level” limitations) in the instant reissue application claims (such that the claims are broadened). Thus, it must be determined what portion of the amendments or argued limitations have been retained, and whether the retained portion materially narrows the original claims to avoid recapture. If the retained portion of the modified limitation is well-known in the prior art, then impermissible recapture exists.
In the instant case, the retained portion of the modified limitation of independent claims 1, 8, and 15 is well-known in the prior art (e.g., see: Smith – U.S. Patent No. 8,570,273 – column 17, line 55 – column 18, line 53: “motion detection system 226 (FIG. 12), and in conjunction with the input device 322, the computing device 326 may be able to recognize a wide range of movements from the user…illustrating different types of movements that may be recognized in such a computing environment…as a series of jointed segments 354 like those used in skeletal computer animations. The series of jointed segments 354 can provide the motion detection system 226 with information about the position of the arm 352 and the right hand 324…input device 322 (FIGS. 15A-15B) adds another segment 356 to the skeletal representation of the user 320 that can provide, for example, an orientation of the right hand 324 and the digit with respect to the arm 352. For example, this may enable determination of a ‘palm up’ or ‘palm down’ motion by the user 320. Changes in position and/or orientation…create a composite representation 358 that can capture ‘fine’ motions. Such composite representation 358 may increase the number of movements that can be recognized and interpreted by the computing device”; Figs. 12, 13, and 15C) and thus impermissible recapture has not been avoided. Additionally, at least the prior art Elangovan (U.S. Patent No. 11,231,786) reference, cited and considered during the original prosecution history of the Martin ‘967 patent, also discloses that the retained portion of the modified limitation of independent claims 1, 8, and 15 is well-known in the art (e.g., see: Elangovan: column 1, lines 29-67; column 3, line 11 – column 4, line 13; Figs. 1(B)(1), 6, and 8). Thus, the retained portion of the modified limitation is not materially narrowing.
Therefore, broadened amended independent claims 1, 8, and 15 attempt impermissible recapture of subject matter surrendered during prosecution of the 17/059,183 application. Dependent claims 2-5, 9, 10, 12, 22-28, 32, 36, and 37 are rejected under similar rationale at least via their dependency. To overcome this rejection, all of the surrendered subject matter must be restored in the corresponding independent claims.
The Reissue Declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The Reissue Declaration filed on 04/27/2023 is now considered defective because of changes or amendments made during prosecution (i.e., via the Amendment to the Claims), none of the identified errors are relied upon any more (see: MPEP 1444(III)).
As noted in MPEP 1444(III)(A), “a supplemental reissue oath or declaration is not required where all errors previously identified in the reissue oath/declaration are no longer being relied upon as the basis for reissue…applicant must explicitly identify an error being relied upon as the basis for reissue (e.g., in the remarks accompanying an amendment)…Identification of the error must be conspicuous and clear and must comply with 35 U.S.C. 251” (bold emphasis added). The Examiner appreciates that Applicant attempted to satisfy this requirement by providing a statement (Remarks, p. 11) pursuant to 37 CFR 1.175(d). However, Applicant’s statement does not provide a valid basis for reissue because the error which is relied upon to support the reissue application is not an error upon which reissue can be based. The Examiner notes that the recapture of surrendered subject matter is not an error correctable by reissue. Thus, as noted above with regards to claims 1-5, 8-10, 12, 15, 22-28, 32, 36, and 37, the only error provided in statement (i.e., “Specifically, original claim 1 of the patent was unnecessarily limited to a method required a step of ‘detecting whether the pointing controller is indoors or outdoors;’ and ‘adjusting the parameters of the arm model depending on whether the pointing controller is indoors or outdoors.’”) to support the reissue is an error related to the recapture of surrendered subject matter.
Appropriate correction is required.
Claims 1-5, 8-10, 12, 15, 22-28, 32, 36, and 37 are rejected as being based upon a defective Reissue Declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 2, 3, 9, 10, 15, 26-28, and 32 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.
Dependent claim 2 recites the limitation “the first intersection” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Dependent claim 3 recites the limitation “the ring controller” in line 3. There is insufficient antecedent basis for this limitation in the claim.
Dependent claim 9 recites the limitation “the first intersection” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Dependent claim 10 recites the limitation “the ring controller” in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
Independent claim 15 recites the limitation “a pointing controller” in line 5. There is insufficient/unclear antecedent basis for this limitation in the claim since “a pointing controller” was previously stated in lines 1-2 of the claim.
Dependent claim 26 recites the limitations “the simulated movement” in line 6 and “the swipe gesture” in line 7 of the claim. There is insufficient/unclear antecedent basis for these limitations in the claim. First, the Examiner believes that “the simulated movement” should be restated simply as “the movement” at least because the virtual object actually moves along pointing vector in the three-dimensional virtual space. Second, the Examiner believes that “the swipe gesture” should be restated as “the swiping gesture.”
Dependent claim 27 recites the limitation “applying a physics model that simulates physical characteristics of the virtual object” in line 3. There is insufficient/unclear antecedent basis for this limitation in the claim. Usually, the terminology of the claims present on the filing date of the application follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted. In the instant case, the disclosure of the Martin ‘967 patent (e.g., column 16, lines 5-49) discloses that a physics model defines parameters (weight, friction, etc.) of virtual objects. To remain consistent with the disclosure of the Martin ‘967 patent, the Examiner suggests the limitation be restated as “applying a physics model that defines parameters of the virtual object.”
Dependent claim 28 recites the limitation “a physics model of the virtual object that simulates a weight of the virtual object” in lines 4-5. There is insufficient/unclear antecedent basis for this limitation in the claim. Usually, the terminology of the claims present on the filing date of the application follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted. In the instant case, the disclosure of the Martin ‘967 patent (e.g., column 16, lines 5-49) discloses that a physics model defines parameters (weight, friction, etc.) of virtual objects. To remain consistent with the disclosure of the Martin ‘967 patent, the Examiner suggests the limitation be restated as “a physics model of the virtual object that defines a weight of the virtual object.”
Dependent claim 32 recites the limitation “causing simulated movement” in line 4 of the claim. There is insufficient/unclear antecedent basis for this limitation in the claim. The Examiner believes, similar to dependent claim 26, that “causing simulated movement” should be restated simply as “causing movement” at least because the virtual object actually moves within the three-dimensional virtual space.
Response to Arguments
Applicant’s arguments filed 12/31/2025 have been fully considered but they are not completely persuasive.
Applicant argues (Remarks, p. 14) that in light of MPEP 1412.02(II) the current claims do no constitute recapture because the presented claims are materially narrowed relative to the alleged surrendered subject matter.
The Examiner respectfully disagrees. As discussed in more detail above in “Step 3” (e.g., see: MPEP 1412.02(II)(C) and 1412.02(III)(B)(4)) of the recapture analysis section, if the retained portion of the modified limitation is well-known in the prior art, then impermissible recapture exists, even in a case where a further limitation has been added. In the instant case, the retained portion of the modified limitation of independent claims 1, 8, and 15 is considered well-known in the prior art and thus is not materially narrowing.
Applicant also argues (Remarks, pp. 14-15) that the limitations now being omitted (i.e., specific claim limitations related to “indoors or outdoors”, “sitting or standing”, and “fatigue level”) were not material to patentability.
Again, the Examiner respectfully disagrees with Applicant. During the original prosecution of the Martin ‘967 patent, the original examiner clearly indicated that all of the limitations from at least dependent claims 6 (limitations related to “indoors or outdoors”), 15 (limitations related to “sitting or standing”), and 24 (limitations related to “fatigue level”) were necessary for patentability.
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(17/059,183 – Non-Final Action, p. 7 – mailed on 09/14/2021)
The original examiner gave no indication that a more general class of techniques for adjusting arm model parameters was patentable over the cited prior art. While not a determinative factor, this determination is buttressed by the fact that prior art references before the original examiner taught that a broader class of techniques for adjusting arm model parameters was well-known 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.
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. Please note the relevant cited prior art listed on the accompanying Notice of References Cited (Form PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adam L Basehoar whose telephone number is (571)272-4121. The examiner can normally be reached 8:00AM - 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, Alexander Kosowski can be reached on 571-272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992
Conferees:
/JOSHUA D CAMPBELL/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992