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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-9 and 14-20, in the reply filed on 2/25/26 is acknowledged. Claims 10-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 14, and 22 of U.S. Patent No. 12,263,400. Although the claims at issue are not identical, they are not patentably distinct from each other because both the patent and application are directed to a handheld gaming device with a handle, a mechanism for connecting the controller to a mobile device, and an arm configured to pivot.
The instant application, while using generally broader language than the patent, is still directed to the same invention as the patent, with the patent anticipating the claims of the application. Since the patent would wholly anticipate the application were it considered prior art, the claims are considered unpatentable over the patent.
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.
The term “substantially rigid” in claims 1 and 14 is a relative term which renders the claim indefinite. The term “substantially rigid” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Without any explicitly defined limits or boundaries, any amount of rigidity could be considered “substantially rigid.” As such, the limitation is indefinite. Claims 2-9 and 15-20 are dependent on these claims and inherit these deficiencies.
Claims 5 and 18 recite the limitation “a maximum linear displacement,” but fail to define what that linear displacement is. The claims then use said maximum linear displacement as a variable, i.e. “three times the maximum linear displacement.” Consequently, without any definition of the displacement, one of ordinary skill in the art would not know if the actual displacement is arbitrary and only used to keep the pivot point at a certain distance. Claims 8 and 19 further cloud this judgment due to explicitly defining a maximum linear displacement. Claims 6-7 are dependent on claim 5 and inherit these deficiencies.
Allowable Subject Matter
Claims 1-9 and 14-20 would be allowable upon filing of a terminal disclaimer and addressing the deficiencies noted above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Crain (US 2017/0189800) discloses a handheld controller grip attachment, but fails to disclose a pivoting rigid arm with connector structured to pair a mobile device. Nevarez (US 10,272,325) discloses a similar mounting system for a mobile device, but again does not disclose a pivoting connector.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Y Kim whose telephone number is (571)270-3215. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached at (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN Y KIM/Primary Examiner, Art Unit 3715