DETAILED ACTIONNotice 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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, 4-11 and 13-18 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. Independent claims 1 and 10 state “wherein the source device is an optical mouse.” There does not appear to be support for the source device being the optical mouse. P[0017] states that the optical mouse acquires macro codes from a source device independent from the optical mouse, p[0019] states the source device is the computer, p[0103] states the source device is the computer or the keyboard, original claim 3 and 12 stated the source device was a keyboard, original claims 4 and 13 stated the source device was the computer, etc. The specification points to the optical mouse being the electronic device in all examples, where the independent claims further state “the source device is independent from the electronic device.” Claims 9 and 18 further define the electronic device as being the optical mouse. Further explanation is required.
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 9 and 18 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. Claims 9 and 18 state “wherein the electronic device is the optical mouse,” where claims 1 and 10 state “the source device is independent from the electronic device” and thus the disclosure of claims 9 and 18 are indefinite.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 2, 4, 8, 10, 11, 13 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tan (2011/0084904) in view of Woolf et al (2009/0327888) (herein “Woolf”). In regards to claims 1 and 10, Tan teaches an electronic device (See; Figs. 1-4 for a programmable mouse. Further see Abstract and p[0030] where the electronic device can be a computer keyboard or other user input device), comprising: a storage device (See; p[0031], p[0034] where the input device includes memory); and a processing circuit (See; Claim 1 for a processor on the programmable user input device), configured to acquire first macro codes of first macro steps provided by a source device (See; Fig. 3 and p[0042]-p[0043] where the input device can acquire keyboard strokes / macros from the keyboard or mouse commands from the mouse such as double click), and configured to record the first macro codes to the storage device (See; p[0034], p[0038]-p[0039]), wherein the source device is independent from the electronic device (Inherent that a keyboard is separate from a mouse, where each input device is independent); wherein the source device is an optical mouse (See; Fig. 3 and p[0042]-p[0043] where the input device can acquire keyboard strokes / macros from the keyboard or mouse commands from the mouse such as double click, thus the source device can be any input device including a mouse); wherein the electronic device further outputs the first macro codes to a target device such that the target device replays a macro corresponding to the first macro steps (See; p[0038] where the mouse with onboard memory can execute macros on different computer systems). Tan fails to explicitly teach wherein the first macro steps comprise movements of the optical mouse. However, Woolf teaches wherein the first macro steps comprise movements of the optical mouse (See; p[0004] where a macro can contain mouse movements as well as multiple keystrokes, menu selections, etc.). Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have Tan include mouse movements in the recorded macros to allow a wider range of computer tasks to be emulated by the macro. In regards to claims 2 and 11, Tan teaches wherein the target device is a computer (See; p[0038] where the target device is a computer system).
In regards to claims 4 and 13, Tan teaches wherein the target device is a computer; wherein the first macro steps are steps for executing at least one program stored in the target device (See; p[0038] where the input device with onboard memory can execute macros on different computer systems).
In regards to claims 8 and 17, Tan teaches wherein the processing circuit is further configured to acquire second macro codes of second macro steps performed by the electronic device and configured to record the second macro codes to the storage device (See; Fig. 4 where a second macro code can be assigned to another button on the mouse).
Claim(s) 5-7 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tan (2011/0084904) in view of Woolf et al (2009/0327888) (herein “Woolf”) and further in view of Sangster et al (2009/0144621) (herein “Sangster”). In regards to claims 5 and 14, Tan fails to explicitly teach wherein the first macro codes comprise state codes indicating states of the first macro steps. However, Sangster teaches wherein the first macro codes comprise state codes indicating states of the first macro steps (See; p[0027], p[0031] where keypress macros can additionally have states of the keys recorded such as press and hold, time held down, delays, key down events, key up events, etc.). Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to modify Tan’s macros to include additional key states so as to be able to record more advanced macros to execute more advanced tasks.
In regards to claims 6 and 15, Sangster teaches wherein the first macro codes comprising definition codes indicating targets or values of the states, wherein different states of the first macro steps correspond to the definition codes with different data volumes (See; p[0027], p[0031] where keypress macros can additionally have states of the keys recorded such as press and hold with the time held down recorded).
In regards to claims 7 and 16, Sangster teaches wherein the first macro codes further comprise delay codes indicating delays between different ones of the first macro steps (See; p[0027], p[0031] for delays recorded).
Claim(s) 9 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tan (2011/0084904) in view of Woolf et al (2009/0327888) (herein “Woolf”) and further in view of Charbonneau et al (2018/0121215) (herein “Charbonneau”). In regards to claims 9 and 18, Tan teaches wherein the electronic device is an optical mouse which has a wireless connection or a wired connection with a host device (See; Figs. 3 and 4 for a mouse which inherently has a wireless or wired connection). Tan fails to explicitly teach wherein the electronic device further performs at least one of following operations while recording the first macro steps: pre-erasing the storage device, decreasing a report rate of the optical mouse, and ignore at least portion of tasks from the host device. However, Charbonneau teaches wherein the electronic device further performs at least one of following operations while recording the first macro steps: pre-erasing the storage device, decreasing a report rate of the optical mouse, and ignore at least portion of tasks from the host device (See; Fig. 48 and p[0010]-p[0011] teaches where when recording a macro command a state of the target application can be monitored, where parts of the macro command can be not executed / ignored if they are not compatible with the target application). Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to modify Tan to ignore incompatible tasks in a macro so as to prevent errors / crashes that may occur with executing incompatible tasks in a particular application.
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 JONATHAN A BOYD whose telephone number is (571)270-7503. The examiner can normally be reached Mon - Fri 8:00 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ke Xiao can be reached at (571) 272-7776. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN A BOYD/Primary Examiner, Art Unit 2627