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 .
Election/Restrictions
Claims 17 and 18 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, see species indicated at fig. 7A, 7C, etc., there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 13, 2025.
Response to Arguments
Applicant's arguments filed April 6, 2026 have been fully considered but they are not persuasive.
Applicant asserts that the amended claims are not disclosed by Burgess. Examiner disagrees and notes that Burgess discloses the amended claims as noted below.
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 1-2,4, 6-7,10-13,15-16 and 19 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.
Claim 1 recites “when installed between the stem and the casing, to contact at least part of the stem and at least part of the casing, limiting a range of motion of the stem, and wherein the insert comprises a material configured to deform in response to motion of the stem” (emphasis added). This recitation does not have support in the original disclosure and is new matter.
Claim 10 recites “wherein the insert is installed between the stem and the casing and configured to contact both the stem and the casing and limit a range of motion of the stem, and wherein the insert comprises a material configured to deform in response to motion of the stem” (emphasis added). This recitation does not have support in the original disclosure and is new matter.
Claim 12 recites “wherein, in the modified arrangement of the joystick, an insert is installed between the joystick and a casing at least partially surrounding the joystick, the insert configured to contact both the joystick and the casing and limit the displacement of the joystick, and wherein the insert comprises a material configured to deform in response to displacement of the joystick” (emphasis added). This recitation does not have support in the original disclosure and is new matter.
Claim 13 recites “wherein, in the modified arrangement of the joystick, an insert is installed between the joystick and a casing at least partially surrounding the joystick, the insert configured to contact both the joystick and the casing and limit the displacement of the joystick, and wherein the insert comprises a material configured to deform in response to displacement of the joystick” (emphasis added). This recitation does not have support in the original disclosure and is new matter.
Claim 15 recites “wherein, in the modified arrangement of the joystick, an insert is installed between the joystick and a casing at least partially surrounding the joystick, the insert configured to contact both the joystick and the casing and limit the displacement of the joystick, and wherein the insert comprises a material configured to deform in response to displacement of the joystick” (emphasis added). This recitation does not have support in the original disclosure and is new matter.
Claim 15 recites “wherein, in the modified arrangement of the joystick, an insert is installed between the joystick and a casing at least partially surrounding the joystick, the insert configured to contact both the joystick and the casing and limit the displacement of the joystick, and wherein the insert comprises a material configured to deform in response to displacement of the joystick” (emphasis added). This recitation does not have support in the original disclosure and is new matter.
Claim 16 recites “wherein the insert is configured to enclose the stem” (emphasis added). This recitation does not have support in the original disclosure and is new matter.
Claim 19 recites “a reinforcing element that is harder than the material configured to deform in response to motion of the stem” (emphasis added). This recitation does not have support in the original disclosure and is new matter.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 4, 6, 10, 11 and 16 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Pub. 2018/0264355 by Burgess.
Regarding claim 1, Burgess discloses an insert for a controller (fig. 2; 130 – see retention ring), the controller comprising a joystick and a casing at least partially surrounding the joystick (fig. 4 – see joystick 120 and housing 114), wherein the insert comprises: a first surface and a second surface (fi. 4 – see in the inner and out surface of the ring), wherein at least one of: the first surface has shape that is complementary with a shape of at least part of a stem of the joystick (fig. 4 – see the inner annular surface of the ring); and the second surface has a shape which is complementary with a shape of at least part of the casing, wherein the insert is configured, when installed between the stem and the casing, to contact at least part of the stem and at least part of the casing, to limit a range of motion of the stem (fig. 4 – see the outer annular surface and the placement of the ring between the casing and thumbstick and see the simultaneous contact between the casing and thumbstick during operation), and wherein the insert comprises a material configured to deform in response to motion of the stem (para. 74 – see soft feel for the ring).
Regarding claim 2, Burgess discloses the insert of claim 1, wherein at least one of: the first surface comprises a curved surface with a radius of curvature corresponding to a radius of curvature of the at least part of the stem; and the second surface comprises a curved surface with a radius of curvature corresponding to a radius of curvature of the at least part of the casing (fig. 4 – see the radius of curvature of the ring “corresponding” to the radius of curvature of both the stem and casing).
Regarding claim 4, Burgess discloses the insert of claim 1, wherein: the insert is shaped as an annulus or an annulus sector; and the first surface comprises an inner surface of the annulus or annulus sector and the second surface comprises an outer surface of the annulus or annulus sector (fig. 1-4 – see the annular nature of the ring).
Regarding claim 6, Burgess discloses the insert of claim 5, wherein the deformable material is elastic (para. 74 – see soft feel for the ring).
Regarding claim 10, this claim is rejected as noted above regarding claim 1.
Regarding claim 11, Burgess discloses the controller of claim 10, comprising at least one sensor to detect that the insert is installed (para. 50-51 – see the sensors for movement of the thumbstick detecting the motion beyond the range of the normal ring reduced thumb stick). Examiner notes that if a particular type of detection our output is required it should be recited, the extended movement of the stick is covered by the current claim language.
Regarding claim 16, Burgess discloses the insert of claim 1, wherein the insert is configured to enclose the stem (fig. 2, 4 – see the stem being enclosed by the ring).
Claim(s) 1 and 19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Pub. 2016/0346680 by Tsai.
Regarding claim 1, Tsai discloses an insert for a controller (fig. 10-11; para. 68-72 – see retention ring), the controller comprising a joystick and a casing at least partially surrounding the joystick (fig. 1 – see joystick at 204 and housing at 250), wherein the insert comprises: a first surface and a second surface (fig. 10-11; para. 68-72 – see in the inner and out surface of the ring), wherein at least one of: the first surface has shape that is complementary with a shape of at least part of a stem of the joystick (fig. 1, 10-11; para. 68-72 – see the inner annular surface of the ring); and the second surface has a shape which is complementary with a shape of at least part of the casing, wherein the insert is configured, when installed between the stem and the casing, to contact at least part of the stem and at least part of the casing, to limit a range of motion of the stem (fig. 1, 10-11; para. 68-72 – see the outer annular surface and the placement of the ring between the casing and thumbstick and see the simultaneous contact between the casing and thumbstick during operation), and wherein the insert comprises a material configured to deform in response to motion of the stem (para. 99 – see elastically deformable material).
Regarding claim 19, Tsai discloses the insert of claim 1, further comprising a reinforcing element that is harder than the material configured to deform in response to motion of the stem (para. 112-119 – see multi-material construction).
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 PETER J IANNUZZI whose telephone number is (571)272-5793. The examiner can normally be reached M-F 9:30AM-5:30PM EST.
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/PETER J IANNUZZI/ Primary Examiner, Art Unit 3715
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