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 .
DETAILED ACTION
The Amendment filed on 6/15/2026 has been received and entered. Application No. 18/328,336 Claims 1, 4-8, 11-12, 15-18, 20-21, 23 & 26-27 are now pending. Claims 1, 4-8, 11-12, 15-18, 20-21, 23 & 26-27 are cancelled. Claims 21, 23, 26 & 27 have been amended.
Response to Amendment
Applicants Amendment did not overcome the previous, 35 USC 112 rejection.
Applicant's arguments with respect to claims 1 have been considered and are not persuasive.
This office action is made final.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “controller” in claims 1, 7, 12, 21 & 27.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4-8, 11-12, 15-18, 20-21, 23 & 26-27 are rejected under 35 U.S.C. 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 pre-AIA the applicant regards as the invention.
Claims 1, 4-8, 11-12, 15-18, 20-21, 23 & 26-27, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for not disclosing sufficient structure to support the claims regarding the modules claimed. See Aristocrat Techs. Australia Pty, Ltd. v. Int'l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008). NetMoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008). Blackboard v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009).
Claim element controller is a limitation that invokes 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Response to Arguments
Applicant's arguments filed on 6/15/2026 have been fully considered but they are not persuasive. Applicant made the following arguments:
Applicant argues, on page 8 of the Remarks, that “Applicant did not intend for the term “controller” to be construed under 112(f), and such interpretation is improper”. Applicant further argues that “Rather, the recited “controller” denotes a structural component having a well-understored meaning in the art”.
Examiner respectfully disagrees, the term “controller” in not necessarily a means plus term, however, it triggers 112(f) rejection. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function. Applicant further argues, on page 9 of the Remarks, that “In the Office Action, claims 1, 4-8, 11, 21, 23, 26, and 27 were rejected under 35 U.S.C. § 112(b). As set forth above, the Examiner's interpretation of the claim term "controller" under 35 U.S.C. § 112(f) is improper. Accordingly, the § 112(b) rejection, which is premised on such an interpretation, is likewise not appropriate and should be withdrawn.” Applicant further argues, on pages 9-10 of the Remarks, that “According to paragraph [0061] of the specification of the present application:
"In an embodiment, the controller 120 may control whether to display the virtual keyboard by determining whether the sum of the number of user's fingers calculated by the touch sensor 110 is greater than or equal to a predetermined reference value."” Applicant continues to list examples of how the controller 120 performs functions for the invention.
Examiner respectfully disagrees, In response to the applicants remarks regarding the 112 second paragraph rejection with respect to claim 17; As per the “Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications” issued February 9, 2011 under section C. Interpreting Claim Limitations Under 112, ¶6/ 2. Rejections Under 112, ¶2 When Examining Means-Plus-Function Limitations Under 112, ¶6; It is states that "To satisfy the definiteness requirement under 112, ¶2, the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function. A rejection under 112, ¶2 is appropriate if the written description fails to link or associate the disclosed structure, material, or acts to the claimed function, or if there is no disclosure (or insufficient disclosure) of structure, material, or acts for performing the claimed function. A bare statement that Known techniques or methods can be used would not be sufficient disclosure to support a means-plus-function limitation." The Specification does not teach a clearly linked structure, material or acts to the claimed function, nor do the arguments. The Applicant listed functions performed by the controller 120 instead. For Example, reliance on the sensor to teach that there is structure is invalid since the sensor and the controller are two separate elements. Paragraphs 56 in the Specification clearly states that the sensor provides information to the controller. The controller however does not have a clearly linked structure in the Specification. The current 112(b) rejection remains valid considering that neither the Specification nor the arguments presented a clearly linked structure to the claim element “controller”.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGIE BADAWI whose telephone number is (571)270-7590. The examiner can normally be reached Monday thru Wednesday 9:00am - 5:00pm EST with Thursdays and Fridays off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fred Ehichioya can be reached at (571) 272-4034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANGIE BADAWI/Primary Examiner, Art Unit 2179
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