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 .
Response to Arguments
The previous objection to the Drawings has been withdrawn in light of the amendments to the Specification, filed 05/18/26.
The previous objections to the claims have been withdrawn in light of the amendments to the claims, filed 05/18/26.
The previous interpretations of claim limitations under 35 U.S.C. 112(f) have been withdrawn in light of the amendments to the claims, filed 05/18/26.
Applicant’s arguments with respect to the rejections of the claims under 35 U.S.C. 102 and 35 U.S.C. 103 have been fully considered and are persuasive. Accordingly, the previous rejections under 35 U.S.C. 102 and 35 U.S.C. 103 have been withdrawn. However, new grounds of rejection have been presented in light of the amendments to the claims, as discussed in detail below.
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.
Claim 12 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 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.
Claim 12 recites “The attachment according to claim 1, further comprising: at least one of: one or more illuminating elements configured to selectively couple to the other of the two handle portions of the video game controller; and a sight for aiming that is configured to selectively couple to the video game controller.” However, the Specification does not disclose wherein the attachment comprising the mounting member (of claim 1) further includes at least one of one or more illuminating elements configured to be selectively coupled to the other of the two handle portions of the controller and a sight configured to be selectively coupled to the controller, as required by the claim. Rather, the Specification discloses wherein one or more illuminating elements may be provided via a second attachment, separate from the attachment comprising the mounting member of claim 1, and further wherein the sight may be provided via a third attachment, also separate from the attachment comprising the mounting member of claim 1 (Specification, Fig. 12 & [0093-0096]).
No prior art is currently provided for claim 12 in light of the rejection under 35 U.S.C. 112(a) above.
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.
Claim 16 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.
Claim 16 recites the limitation "the control signal" in ln. 3. There is insufficient antecedent basis for this limitation in the claim.
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 1-2, 9, 13, and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kotkin (U.S. Pub. 2015/0072790 A1).
Regarding claim 1, Kotkin discloses an attachment for a video game controller (Figs. 1-2; [0024], palm actuator 10 that can be added on to an existing game controller 20), comprising:
a mounting member that is removably couplable to: (a) a center portion of a video game controller that includes (i) the center portion, (ii) two handle portions that each extend from the center portion, and (iii) one or more control elements that are configured to be manipulated by a user (Figs. 1-2; [0024-0025], wherein the palm actuator is removably coupled at one end (head portion 18) to a control element (one of buttons X, Y, A, or B) located on the center portion of the video game controller), and to (b) one of the two handle portions of the video game controller (Figs. 1-2; [0024-0025], wherein the palm actuator is further removably coupled to one of the handle portions extending from the center portion); and
a trigger that is movably coupled to the mounting member and that is configured to selectively couple to at least one of the one or more control elements of the video game controller, a motion of the trigger relative to the mounting member causing the control element to move (Figs. 1-2; [0024-0025], spring arm 14 pivotally (or hingedly) attached to the mounting member (palm actuator) and comprising the head portion 18 disposed over one of the buttons X, Y, A, or B, wherein motion of the spring member 14 relative to the mounting member causes the button to move inwards (actuate)).
Regarding claim 2, Kotkin further discloses wherein: the trigger is hingedly coupled to the mounting member (Figs. 1-2; [0024-0025], the spring arm 14 pivotally (or hingedly) attached to the mounting member), or the trigger is slidably coupled to the mounting member.
Regarding claim 9, Kotkin further discloses wherein the trigger is biased towards a predetermined position (Figs. 1-2; [0024-0025], where the spring arm is biased to be in close proximity to the user’s palm 35 and only moves upon the application of force (squeezing the spring arm towards the base portion 12 of the palm actuator (mounting member))).
Regarding claim 13, Kotkin discloses a video game input system (Figs. 1-2; [0024]), comprising:
a video game controller that comprises a center portion, two handle portions that each extend from the center portion, and one or more control elements that are configured to be manipulated by a user (Figs. 1-2; [0024], video game controller 20 comprising a center portion which includes one or more control elements configured to be manipulated by a user and two handle portions that each extend from the center portion); and
an attachment comprising: a mounting member that is removably couplable to the center portion of the video game controller and to one of the two handle portions of the video game controller (Figs. 1-2; [0024-0025], palm actuator removably coupled at one end (head portion 18) to a control element (one of buttons X, Y, A, or B) located on the center portion of the video game controller and to one of the handle portions extending from the center portion); and
a trigger that is movably coupled to the mounting member and that is configured to selectively couple to at least one of the one or more control elements of the video game controller, a motion of the trigger relative to the mounting member causing the control element to move (Figs. 1-2; [0024-0025], spring arm 14 pivotally (or hingedly) attached to the mounting member (palm actuator) and comprising the head portion disposed over one of the buttons X, Y, A, or B, wherein motion of the spring member 14 relative to the mounting member causes the button to move inwards (actuate)).
Regarding claim 17, Kotkin further discloses wherein the mounting member extends along a side surface of the handle portion of the video game controller to which the mounting member is coupled (Figs. 1-2; [0024-0025], see, e.g., Fig. 2, where the mounting member extends along a side surface of the right handle portion).
Regarding claim 18, Kotkin further discloses wherein the mounting member comprises a coupling surface that is complementary with an outer surface of at least the handle portion of the video game controller (Figs. 1-2; [0024-0025], the base portion 12 of the mounting member closely conforming to the curvature of the game controller or to a skin or shell placed over the game controller, the mounting member extending along the handle portion).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kotkin.
Regarding claim 3, Kotkin further discloses a coupling element, wherein a first portion of the coupling element is coupled to the trigger and a second portion of the coupling element is removably couplable to the control element (Figs. 1-2; [0025], screw attachment (coupling element) with a first portion coupled to the trigger (spring arm 14) and a second portion removably coupled to the head portion 18/button (control element)). While Kotkin may not explicitly disclose wherein the control element comprises a thumbstick of the video game controller, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to alternatively couple the second portion to a different control of the video game controller (e.g., a thumbstick, as is present in the controller of Figs. 1-2, as opposed to a one of the buttons X, Y, A, or B) depending on what functionality the trigger is intended for.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kotkin in view of Marks et al. (U.S. 10,143,920 B2) (hereinafter “Marks”).
Regarding claim 15, Kotkin discloses the video game controller corresponding to a video game console (entertainment device) (i.e., XBOX) (Figs. 2-3 & 6; [0028]). However, Kotkin may not further disclose an imaging device that is couplable to an entertainment device, wherein the imaging device is configured to capture one or more images of the video game controller when held by a user, and transmit one or more of the images to the entertainment device when coupled thereto. Nevertheless, Marks teaches these limitations (Figs. 2, 11A-11B, & 13A-14D; Col. 4, ln. 17-Col. 5, ln. 14; Col. 13, ln. 14-36; Col. 15, ln. 14-54, wherein an image capture device 104, coupled to a video game console (e.g., Sony Playstation 2, Sony Playstation 3, etc.), captures one or more images of a controller (e.g., interface object 112, and/or interface object coupled with a video game controller) held by the user, wherein the console receives the image data captured from the image capture device and correspondingly controls an action in the application program being executed on the console). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to utilize an image capture device, coupled to an entertainment device (video game console), in order to capture image data of the video game controller and transmit said data to the entertainment device, as taught by Marks, in the invention of Kotkin to affect an action in a displayed game by the entertainment device (Marks, Col. 4, ln. 62-Col. 5, ln. 14; Col. 15, ln. 14-32).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kotkin in view of Kotkin (U.S. Pub. 2010/0298053 A1) (hereinafter “Kotkin II”).
Regarding claim 16, Kotkin discloses the video game controller corresponding to a video game console (entertainment device) (i.e., XBOX) (Figs. 2-3 & 6; [0028]). However, Kotkin may not further disclose an entertainment device comprising: receiving circuitry configured to receive at least the control signal emitted from the video game controller in response to the motion of the trigger, and processing circuitry configured to control operation of the entertainment device based at least upon the received control signal. Yet, Kotkin II, directed to at least one actuator cooperating with a video game controller for adding functions to be controlled with parts of the hand of the user ([0009]), teaches these limitations ([0027-0028]; [0031], wherein actuation of a trigger/lever coupled to the controller causes actuation of the attached control of the controller which emits a signal to a corresponding console to control an operation in a video game displayed by the console (e.g., walking, jumping, switching weapons, shooting, etc.)). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to transmit a control signal emitted from the video game controller in response to the motion of the trigger to the entertainment device to control operation of the entertainment device based at least on the received control signal, as taught by Kotkin II, in the invention of Kotkin to affect an action in a displayed game by the entertainment device based on the operation of the trigger/actuation of a control of the controller.
Allowable Subject Matter
Claims 19-24 are allowed.
The following is an examiner’s statement of reasons for allowance: As presented, the combination of all the elements of independent claims 19 and 24 do not appear in a single reference of prior art. Additionally, based on the art of record, it does not appear that it would have been obvious to a person of ordinary skill in the art at the time the application was filed to combine various pieces of the cited prior art to obtain each and every limitation as currently required by independent claims 19 and 24. That is, the relevant, cited prior art fails to disclose, teach, or suggest an attachment to a video game controller comprising a mounting member that is coupled to both a center portion and a selected one of two handle portions of a video game controller, a trigger coupled to the mounting member and configured to be moved by a user’s finger, control circuitry that is configured to generate a control signal in response to movement of the trigger, and a communication interface that is configured to selectively couple to and transmit the control signal to the video game controller, as required by claims 19 and 24.
Claims 4 and 10-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter of claims 4 and 10-11: The relevant prior art does not disclose, teach, or suggest the attachment as recited in claim 3 further comprising one or more pulleys configured to adjust a direction in which the thumbstick moves when the motion of the trigger occurs, wherein the one or more pulleys are coupled to the mounting member and the coupling element is configured to make contact with at least one of the pulleys when coupled to the thumbstick, as required by claim 4, nor the attachment of claim 1 further comprising a trigger guard or a safety catch, as required by claims 10 and 11, respectively.
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 ALYSSA N BIANCAMANO whose telephone number is (571)272-4280. The examiner can normally be reached M-F: 8:30am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol, can be reached at (571)272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALYSSA N BIANCAMANO/Examiner, Art Unit 3715
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