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 .
Claim Rejections - 35 USC § 112
2. 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.
3. Claim 6 is 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. Examiner construes Claim 1 to recite that the second frame be made of a material with a higher rigidity and Claim 6 to be that the second frame is made of the same material as the first frame. Yet, Examiner cannot locate in Applicant disclosure that support for the second frame while being made of resin it is a resin that is a higher rigidity of the resin used in the first frame. To advance prosecution, Examiner construes Claim 6 to be that the first frame is made of resin. Appropriate attention is required.
4. 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.
5. Claim 5 is 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. With reference to Applicant’s Fig.5, it is unknown to what structure Applicant is referring to when he recites “the first frame has a first part and a second part separated from each other in a direction orthogonal to the upward-downward direction.” There are many features associated with the first frame and there is some semblance of symmetry in the area where there are two recesses U12 to accommodate each device 350. Moving to Fig. 4, it is still not clear where the two parts of the first frame are. Are they the structures of DI and D2? The locations of U10? Even so, this understanding is compounded by then assessing whether any structures are orthogonal to the plane of the first frame. To advance prosecution, Examiner construes Claim 5 to recite that “the first frame has a first part and a second part separated from each other.”
Claim Rejections - 35 USC §§ 102/103
6. 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.
(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.
7. 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 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.
8. 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.
9. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
10. Claims 1, 2, and 5 are rejected under 35 U.S.C. 102(a1, a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN 1276551A to Alps Electric Co Ltd (Alps) in view of CN 109309508A to LG Electronics (LG).
In Reference to Claim 1
Alps discloses an input device (Figs. 1 and 2), comprising:
an internal structure (Fig. 1) including a first frame (Fig. 2 flexible plate 3) and a second frame (Fig. 2 base plate 21) and attached to the first frame (Fig. 2 attached with pins 42);
a lower case (Fig. 2 lower box body 2) configured to cover a lower side of the internal structure (Figs. 1 and 2) and attached to the internal structure (Fig, 2 body attached by receiving protruding pins 42); and
an upper case (Fig. 2 upper cartridge body 1) configured to cover an upper side of the internal structure (Figs. 1 and 2) and attached to the lower case (Fig. 2 body attached by protruding pins 42).
Alps discloses the invention substantially as claimed. However, the reference does not explicitly disclose wherein plate 21 {the second plate} is formed by a material having a higher rigidity than the flexible plate 3 {first frame}. One of ordinary skill in the art as demonstrate by the art of record would have readily appreciated that the product-by-process limitation of the claim, “a second formed by a material having a higher rigidity than the first frame,” would have imparted the structural characteristic of making the combination of elements more rigid when assembled. One or ordinary skill in the art would have also appreciated that the process of “a second frame forming by a material having a higher rigidity than the first frame” was the predominant, conventional technique for making more durable hand-held mobile devices like game {input} controllers at the time. Therefore, it would have been reasonable to assume that the prior art was using this technique, absent a teaching to the contrary. For these reasons, it would have been reasonable for one of ordinary skill in the art to assume that the structural characteristics of the prior art game {input} controller frames and the claimed invention are indistinguishable, e.g., the prior art second frame material is also of a higher rigidity.
However, if Applicant disagrees with Examiner’s contention, Applicant is directed to the materials and structure of the mobile device of LG.
LG teaches of a mobile terminal and material properties of the device (Fig. 1B). The mobile terminal 100 has many functions to include additional functions supporting gameplay (Page 1, para. 6, see highlighted sections of English translation). In particular, for intensity and rigidity a frame including a middle section 290 (Fig. 2 290) where “[f]or strength and rigidity, the mobile terminal 100 may include is configured to support display unit 151 the rear surface of the middle frame (290, see FIG. 3). the middle frame 290 may include a strength of the metal material” (Page 13, para. 1). Additionally, “housing 101, 102, 103 can be formed by injection molding the synthetic resin, or may be made of, for example, stainless steel (STS), aluminum (Al), titanium (Ti) is formed of a metal (Page 13, para. 6). Thus, LG teaches that metal can be substituted for resin parts where rigidity is desired.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way; and
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Here, it would require only routine skill in the art to modify the base plate {second frame} of Alps by combining parts made of materials of a higher rigidity like metal of LG in order to achieve the predictable result of making the mobile device more rigid or more resistant to bending or changes in shape. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
In Reference to Claim 2
Alps discloses a first operation member (Fig. 2 control lever 22); and
a supporting structure attached to the second frame and configured to support the first operation member (control level is supported by a rectangular mount which is attached to base plate 21 (Fig. 2).
In Reference to Claim 5
Examiner construes “wherein the first frame and the second frame are attached to each other in an upward-downward direction” to mean that the frames are in adjacent and parallel planes which if disclose by Alps (Fig. 2), the first frame (Fig. 2 flexible plate 3) has a first part and a second part separated from each other (Fig. 2 separated positioning pins 42), and has an opening between the first part and the second part (Fig. 2 there are curved cutouts to make space for the input controls 22 located between the pins 42), and the second frame (Fig. 2 21) has an attachment portion attached to the first part and an attachment portion attached to the second part (Fig. 2 shows that below the pins 42 there are extended pins which are received by mating structures adjacent to frame 21).
Claim Rejections - 35 USC § 103
11. 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 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.
12. 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.
13. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
14. Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Alps in view of U.S. Pat. Pub. No. 2011/0105231 to Ambinder.
Alps discloses the invention substantially as claimed to include a first {second} operation member{s} (Fig. 2 control lever{s} 22); and a supporting structure attached to the second frame and configured to support the first {second} operation member (control levers 22 are supported by respective rectangular mounts which are attached to base plate 21 (Fig. 2). However, the reference does not explicitly disclose wherein the supporting structures of each control lever 22 is detachably attached to the second frame. One of skill in the art would be aware of the swappable components of Ambinder.
According to Ambinder, “[o]ne or more main control input interfaces on the game controller consist of generalized sockets. A variety of modular input interfaces can be plugged into these sockets. Hardware specific to the input type of the modular input is contained within the modular input itself, and plugged in via an interface. This allows for dual analog sticks, a combination of analog and trackball, or further any combination of touchpad, directional pad, or additional components.” (Anstr.). In addition, Ambinder teaches of modular control inputs 101, 103, 104 (Fig. 1) and sockets 151 and 152 (Fig.1) such that the modular inputs are shaped for easy manual insertion and removal (Fig. 3, [0034]).
Here, it would require only routine skill in the art to modify the rectangular mounts of the inputs 22 of Alps with the modular control inputs and sockets of Ambinder to achieve the predictable result of allowing controllers to be swapped with input controls specific to the title of input the title of the game may require. The Courts have held that simple substitution of one known element for another to obtain predictable results to be indicia of obviousness.
15. Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Alps in view of U.S. Pat. No. 5,664,113 to Date.
In Reference to Claim 6
Alps discloses the invention substantially as claimed. However, the reference does not explicitly disclose wherein the first frame is made of resin. One of skill in the art would be aware of the teachings of Date.
Date discloses a hand-held control device (Titl.) wherein much of the internal framing is made of resin. “As a result of using the substrate supporting posts each having a cylindrical shape having a small diameter as structures which support the circuit substrates 81, 82 and 83, it is possible to sparsely scatter the substrate supporting posts on the bottom case 12. As a result of thus sparsely scattering the structure parts for supporting the circuit substrates on the inner wall surface of the bottom case 12, when the bottom case 12 including the circuit substrate supporting structure parts is molded in a resin molding process, even when the molded member is shrunk due to cooling thereof after molding, undesirable deformation can be prevented from occurring in the bottom case 12. In addition to the case and supporting structure parts, internal supporting plate 295 (Fig. 14 295, Col. 13, ll. 55-61).
Here, it would require only routine skill in the art to amplify the understanding of the internal structural elements within the controller of Alps would be made of the resin of Date to achieve the predictable result of making explicit the material and technology used for these devices. The Courts have held that applying a known technique to a known device (method, or product) ready for improvement to yield predictable results to be indicia of obviousness.
In Reference to Claim 7
Date further teaches of providing attachment holes in which a common screw is inserted is formed in each of the upper and lower cases as well as through the internal plates and structural elements inside the controller. One of skill in the art would incorporate the common screws of Date to the upper case, first frame, the second frame, and lower case of Alps in order to achieve the predictable result of removably binding the elements when fully assembled. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
Conclusion
16. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is in the Notice of References Cited.
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul A. D’Agostino whose telephone number is (571) 270-1992.
18. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
19. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached on (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-270-2992.
/PAUL A D'AGOSTINO/ Primary Examiner, Art Unit 3715