DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 5, 2025 has been entered.
Examiner’s Comment
The amendment dated December 5, 2025 resulted in dependent claims depending on a subsequently numbered claim (i.e., claim 2 depends on claim 9).
This numbering violates 35 U.S.C. 112(d) which recites “a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed” (emphasis added). Therefore, a 35 U.S.C. 112(d) rejection has been added below.
Examiner notes standard practice is to cancel the dependent claim with allowable subject matter and incorporate the limitations into the independent claim to maintain claim numbering.
Examiner believes the easiest solution for the existing claim set is to cancel the existing dependent claims and add them back as new claims in the proper order.
Claim 20 recites a computer-readable medium. Examiner had previously interpreted paragraph [0107] of the specification as filed as limited to non-transitory storage. However, upon closer review, Examiner notes the specification uses the term “may” which is considered open-ended language. Therefore, a 35 U.S.C. 101 rejection has been added below.
Examiner attempted to contact Applicant on December 22 and December 23 to resolve the above problems via Examiner’s Amendment and expedite an allowance. However, every attempt to call (613) 567-0762 resulted in a single ring followed immediately by a line disconnection.
CLAIM INTERPRETATION
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
Claim limitations "(1) a multimode switching module; and (2) a communication module" (Claims 2, 19 and 20 – enumeration added) have been interpreted under 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph, because:
(A) The claim uses a non-structural term "module" as a generic placeholder for "means" based on at least paragraph [0027] of the specification as filed (see also MPEP 2181(I)(A));
(B) The term "module" is coupled with functional language:
(1) switching a mode of the pointing device between a first mode, an air mouse mode, and an annotation mode;
(2) obtaining the information from the IMU and transmitting the information to a display device; and
(C) Sufficient structure to achieve the function has not been recited and the generic placeholder is not preceded by a structural modifier.
Since these claim limitations invoke 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph, Claims 2, 19 and 20 are interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph limitation:
(1) The multimode switch module appears to include at least a mechanical button, capacitive or resistive touch surface or button, force sensors placed at the sides of a housing associated with the pointing device, and may be implemented as a single button (paragraph [0057] of the specification as filed);
(2) The communication module appears to include at least hardware, firmware, and software support for communications protocols such as WiFi, UWB, and Bluetooth, near field communication or other communication protocol (paragraph [0059 of the specification as filed).
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph, or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. § 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
In the interest of compact prosecution, Examiner notes the term "inertial measurement unit" (i.e., IMU) does not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because persons of ordinary skill in the art reading the specification understand the term to have a sufficiently definite meaning as the name for the structure that performs the function.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claim recites, inter alia, “computer-readable medium.” After close inspection, the Examiner respectfully notes that the disclosure, as a whole, does not specifically identify what may be included as a computer readable storage medium and what is not to be included as a computer readable storage medium.
An Examiner is obliged to give claims their broadest reasonable interpretation consistent with the specification during examination. The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers a signal, per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter.
Therefore, the computer readable medium of the claim may include transitory propagating signals. As a result, the claim pertains to non-statutory subject matter.
However, the Examiner respectfully submits a claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation “non-transitory” to the claim. Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. For additional information, please see the Patents’ Official Gazette notice published February 23, 2010 (1351 OG 212).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-8, 10, 11 and 13-18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The claims are dependent on a subsequent claim rather than a claim previously set forth.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 9 and 19 are allowed.
Claims 2-8, 10, 11 and 13-18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
The claims are allowable for substantially the same reasons previously indicated on pages 21-22 of the Office Action dated September 2, 2025.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTONIO J XAVIER whose telephone number is (571)270-7688. The examiner can normally be reached M-F 830am-5pm PST.
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/Antonio Xavier/Primary Examiner, Art Unit 2622