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 .
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 11,389,721 in view of US 20230182011 to Vroom et al. (hereinafter Vroom). The instant claims are not patentably distinct from the patent claims because they are directed to substantially similar subject matter as the patent claims. More particularly, both sets of claims are directed to a game controller that engages with a mobile device, the game controller comprising first and second handles having a bridge therebetween which allow for adjustable engagement with the handles and connect to the mobile device. The patent claims comprise substantially similar subject matter except that they do not include the magnetic features of the instant claims. Regardless, it would have been obvious to one of ordinary skill in the art before the effective date to modify the patent claims to include the magnetic features of Vroom (discussed further below) in order to allow convenient attachment of mobile devices such as smart phones.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,839,810 in view of US 20230182011 to Vroom et al. (hereinafter Vroom). The instant claims are not patentably distinct from the patent claims because they are directed to substantially similar subject matter as the patent claims. More particularly, both sets of claims are directed to a game controller that engages with a mobile device, the game controller comprising first and second handles having a bridge therebetween which allow for adjustable engagement with the handles and connect to the mobile device. The patent claims comprise substantially similar subject matter except that they do not include the magnetic features of the instant claims. Regardless, it would have been obvious to one of ordinary skill in the art before the effective date to modify the patent claims to include the magnetic features of Vroom (discussed further below) in order to allow convenient attachment of mobile devices such as smart phones.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11,826,642 in view of US 20230182011 to Vroom et al. (hereinafter Vroom). The instant claims are not patentably distinct from the patent claims because they are directed to substantially similar subject matter as the patent claims. More particularly, both sets of claims are directed to a game controller that engages with a mobile device, the game controller comprising first and second handles having a bridge therebetween which allow for adjustable engagement with the handles and connect to the mobile device. The patent claims comprise substantially similar subject matter except that they do not include the magnetic features of the instant claims. Regardless, it would have been obvious to one of ordinary skill in the art before the effective date to modify the patent claims to include the magnetic features of Vroom (discussed further below) in order to allow convenient attachment of mobile devices such as smart phones.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/945830 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to substantially similar subject matter. More particularly, both sets of claims are directed to a game controller that engages with a mobile device, the game controller comprising first and second handles having a bridge therebetween which allow for adjustable engagement with the handles and connect to the mobile device using a magnetic connection.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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)(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.
Claims 1-3, 5-7, 9-11, 14-16, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20230182011 to Vroom et al. (hereinafter Vroom).
Regarding claim 1, Vroom teaches a game controller (e.g., ¶ 95 and Fig. 5) comprising:
a first handle (e.g., first controller module 505);
a second handle (e.g., second controller module 510);
a bridge coupling the first and second handles (e.g., rails 565 and 570 and/or adjustable bridge structure 555); and
a magnetic connector configured to provide a magnetic connection (e.g., a magnetic alignment feature such as a MagSafe inductive charger including orientation magnetics 590 in ¶ 98) with an external device (e.g., mobile device in ¶ 98), wherein the magnetic connector is coupled with the bridge and positioned between the first and second handles (see at least Fig. 5), and wherein the game controller is configured such that the magnetic connector is free to move relative to the first and second handles (e.g., the adjustable bridge structure 555 can expand and contract from the center or middle of the mobile device controller 500 (or approximately therefrom) so that the inductive charging array 585 of the mobile device controller 500 can be maintained substantially centered in the mobile device controller 500 in ¶ 98; see also ¶ 95 explaining an embodiment of the adjustable bridge structure 555 being elastic).
Regarding claim 2, Vroom teaches wherein the magnetic connector is free to move along one or both of (i) an axis between the first and second handles or (ii) an axis substantially perpendicular to the axis between the first and second handles (see Fig. 5 and ¶¶ 95 and 98 discussed above).
Regarding claim 3, Vroom teaches further comprising a magnetic connector island for carrying the magnetic connector (e.g., adjustable bridge structure 555, inductive charging array 585, or other structure supporting orientation magnetics 590), wherein the magnetic connector island is coupled with the bridge (e.g., rails 565 and 570 and/or adjustable bridge structure 555) and positioned between the first and second handles (e.g., Fig. 5), and wherein the magnetic connector is coupled to the bridge via the magnetic connector island (e.g., the adjustable bridge structure 555, inductive charging array 585, or other structure that supports the orientation magnetics 590).
Regarding claim 5, Vroom teaches wherein the bridge (e.g., first and second anchors 575 and 580 in ¶ 95) is fixed relative to the first and second handles (e.g., a first anchor 575, which can form a structural component of the first controller module 505 and/or a second anchor 580, which can form a structural component of the second controller module 510), and wherein the game controller being configured such that the magnetic connector is free to move relative to the first and second handles comprises the game controller being configured such that the magnetic connector island is free to move relative to the bridge (e.g., the elastic structure within the adjustable bridge structure 555 can allow the first and second controller modules 505 and 510 to be pulled apart or extended laterally, wrapped around the backside of the mobile device, and then contracted to engage with and firmly hold opposing sides of the mobile device in a form-fitting configuration in ¶ 95).
Regarding claim 6, Vroom teaches wherein the game controller being configured such that the magnetic connector is free to move relative to the first and second handles comprises the game controller being configured such that the bridge and the magnetic connector island are free to move relative to the first and second handles (e.g., the adjustable bridge structure 555 can expand and contract from the center or middle of the mobile device controller 500 (or approximately therefrom) so that the inductive charging array 585 of the mobile device controller 500 can be maintained substantially centered in the mobile device controller 500 in ¶ 98; see also ¶ 95 explaining an embodiment of the adjustable bridge structure 555 being elastic).
Regarding claim 7, Vroom teaches wherein: the magnetic connector island is positioned between the first and second handles such that, when the bridge is in a retracted position, the magnetic connector is off-center between the first and second handles (e.g., the leftmost- or rightmost orientation magnet 590 is offset relative to the center between the handles; see Fig. 5); and the first and second handles are configured to move in a non-synchronized and non-equidistant manner away from the magnetic connector island such that the magnetic connector is centered between the first and second handles when the bridge is in an extended position (e.g., the handles may slide independently along guide rails 565 and 570 in ¶ 97; see also ¶ 98 discussing that the inductive charging array 585 may be substantially or approximately centered, which indicates that it need not be precisely centered; see also ¶¶ 78 and 95 explaining that the guide rails may be flexible, which also allows for the claimed movement).
Regarding claim 9, Vroom teaches wherein: the bridge is configured to move between the retracted position and the extended position in first and second stages; in the first stage, only one of the first and second handles moves until the magnetic connector is centered; and in the second stage, both the first and second handles move while the magnetic connector stays centered (e.g., ¶¶ 78 and 95 explain that the guide rails may be flexible, which allows for the claimed movement).
Regarding claim 10, Vroom teaches wherein the magnetic connector is configured to rotate upon movement of the first and second handles (e.g., when a player rotates the handles, the magnetic connector also rotates).
Regarding claim 11, Vroom teaches a game controller (e.g., ¶ 95 and Fig. 5) comprising:
a first handle (e.g., first controller module 505);
a second handle (e.g., second controller module 510);
a bridge coupling the first and second handles (e.g., rails 565 and 570 and/or adjustable bridge structure 555);
a magnetic connector configured to provide a magnetic connection (e.g., a magnetic alignment feature such as a MagSafe inductive charger including orientation magnetics 590 in ¶ 98) with an external device (e.g., mobile device in ¶ 98); and
a magnetic connector island (e.g., adjustable bridge structure 555, inductive charging array 585, or other structure supporting orientation magnetics 590) for carrying the magnetic connector that is coupled with the bridge and positioned between the first and second handles, wherein the game controller is configured such that the bridge and the magnetic connector island are free to move together relative to the first and second handles (e.g., using guide rails 565 and 570).
Regarding claim 14, Vroom teaches wherein the bridge and the magnetic connector island are free to move together along an axis between the first and second handles (e.g., using guide rails 565 and 570; see also ¶¶ 78 and 95 explaining that the guide rails may be flexible, which also allows for the claimed movement).
Regarding claim 15, Vroom teaches wherein the game controller is further configured such that the magnetic connector island is free to move relative to the bridge along an axis that is substantially perpendicular to the axis between the first and second handles (e.g., ¶¶ 78 and 95 explain that the guide rails may be flexible, which allows for the claimed movement)
Regarding claim 16, Vroom teaches a game controller (e.g., ¶ 95 and Fig. 5) comprising:
a first handle (e.g., first controller module 505);
a second handle (e.g., second controller module 510);
a bridge coupling the first and second handles (e.g., guide rails 565 and 570);
a magnetic connector configured to provide a magnetic connection (e.g., a magnetic alignment feature such as a MagSafe inductive charger including orientation magnetics 590 in ¶ 98) with an external device (e.g., mobile device in ¶ 98); and
a magnetic connector island (e.g., the adjustable bridge structure 555, inductive charging array 585, or other structure that supports the orientation magnetics 590) for carrying the magnetic connector that is coupled with the bridge and positioned between the first and second handles, wherein the game controller is configured such that the magnetic connector island is free to move relative to the bridge (e.g., using guide rails 565 and 570).
Regarding claim 21, Vroom teaches wherein the magnetic connector island has an internal tunnel, wherein the bridge is positioned within the internal tunnel of the magnetic connector island, and wherein the internal tunnel is sized to allow the magnetic connector island to move along an axis that is substantially parallel to an axis between the first and second handles (e.g., guide rails 565 and 570, which indicate a tunnel is present in order to slide along or otherwise form the rails themselves).
Claim Rejections - 35 USC § 103
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.
Claims 8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Vroom in view of US 2021/0275907 to Khaira et al. (hereinafter Khaira).
Regarding claims 8 and 12, Vroom teaches the game controller substantially as described above, including movement of first and second handles in non-synchronized and non-equidistant manners and wherein the game controller being configured such that the bridge and the magnetic connector island are free to move together relative to the first and second handles comprises the game controller being configured such that the bridge and magnetic connector island are free to move together relative to the first and second handles via a movable shaft. However, Vroom lacks in explicitly teaching a rack-and-pinion system or pinion gear to accomplish said movements. In a similar disclosure, Kaira teaches a game controller for a mobile device having handles, a bridge, and a device to hold a mobile device (see abstract). More particularly, Kaira teaches a first linear rack 111, a second liner rack 112, and a pinion 124 (e.g., ¶¶ 33 and 40, and Figs. 5-6). It would have been obvious to one of ordinary skill in the art before the effective date to modify the invention of Vroom to include the pinion gear coupling the bridge and the first and second handles, as taught or suggested by Kaira, in order to allow easier actuation of the handle device to accept a mobile device. Similarly, it would have been obvious to one of ordinary skill in the art before the effective date to modify the combination of Vroom and Kaira to include a dual rack-and-pinion system with different gear ratios in order to preserve the non-synchronized and non-equidistant manner of motion taught by Vroom.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Vroom in view of US 2018/0217662 to Smoot et al. (hereinafter Smoot).
Regarding claim 13, Vroom teaches the invention substantially as described above, but lacks in explicitly teaching a movable gear belt coupling the bridge and the first and second handles. In a related disclosure, Smoot teaches a variety of mechanical systems to drive various parts of a gaming system, including a toothed belt connected to a disk angle motor and a second or lower disk angle pully connected to the toothed belt and disk angle motor (e.g., ¶ 105). The term “toothed belt” is construed as a “gear belt,” as claimed. Smoot further teaches that such toothed belts and other ganged mechanisms allow driving of multiple elements using a single driving source (e.g., ¶ 120). It would have been obvious to one of ordinary skill in the art before the effective date to modify the invention of Vroom to include the gear belt of Smoot to couple the bridge and first and second handles, as claimed, in order to allow either or both of the user’s hands to actuate the controller handles toward or away from each other.
Claims 4 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Vroom.
Regarding claim 17, Vroom teaches the invention substantially as described above, but lacks in explicitly teaching wherein the game controller is configured such that a force required to move the magnetic connector island relative to the bridge is less than a shear force between the magnetic connector and a computing device that is magnetically coupled with the magnetic connector. Regardless, it would have been obvious to one of ordinary skill in the art before the effective date to modify the invention of Vroom to include such features in order to ensure the mobile device does not unexpectedly disconnect from the magnetic connector while in use.
Regarding claims 4 and 18-20, Vroom teaches the invention substantially as described above, but lacks in explicitly teaching wherein one of the magnetic connector island or the bridge comprises a protrusion and the other of the magnetic connector island or the bridge comprises a slot and wherein the game controller being configured such that the magnetic connector island is free to move relative to the bridge comprises the game controller being configured such that the magnetic connector island is free to move relative to the bridge via movement of the protrusion in the slot, wherein the slot is oriented in one or both of (i) an axis between the first and second handles or (ii) an axis that is substantially perpendicular to the axis between the first and second handles, and/or the slot is square diamond shaped. Regardless, it would have been obvious to one of ordinary skill in the art before the effective date to modify the invention of Vroom to include such features in order to allow the user to adjust the tilt, rotation, and/or orientation of the mobile device while it is connected to the magnetic connector taught by Vroom.
Examiner’s Note
Note that while the above discussions of claims focus on Figure 5 of Vroom, other figures are also applicable to the instant claims. For instance, Figures 1-3 and 12-14 contain similar features to Figure 5, such as rails and magnetic alignment features. For this reason, at least Figures 1-3 and 12-14 are also applicable to the instant claims. The Examiner expressly indicates that these and any figures of the cited prior art references are applicable to the instant claims. Similarly, while certain features of the cited prior art references are mapped to the claim language (e.g., bridge, island, etc.), the Examiner expressly indicates that these are merely exemplary and that other disclosed features of the cited prior art are equally applicable to the claimed elements.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached at 571-272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715