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 .
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.
Claim 1 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18776749 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘749 encompasses the claim language of the instant application and are not patentably distinguishable despite sight language differences. The only difference between ‘749 and the instant application is that the copending application additionally teaches “a pad above the base and supported thereon, the active buttons being supported by the pad, a surface of the pad defining an oblique angle with respect to a surface of the base.” Thus, a non-statutory type double patenting is warranted.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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(s) 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Watanachote (U.S. PGPUB 2005/0277470 herein’ known as ‘470).
Re claim 1: ‘470 discloses an apparatus (Fig. 1, object 23: game controller) comprising:
a base (Fig. 1, object 30: the joystick has a base portion);
a plurality of active buttons juxtaposed with a top surface of the base, wherein at least some of the active buttons being manipulable to control a character in a computer game (see Fig. 1, objects 24 and 25, and paragraph [0054]: buttons for controlling a game character);
plural control buttons supported by the base and arranged in a single row, at least some of the control buttons being operable to input control signals to the apparatus (see Fig.1, object 26: operational inputs in a row); and
a lever extending through the base and manipulable to input analog signals to the computer game (see Fig. 1, object 30: joystick).
‘470 fails to disclose a plural active button arranged in two arcuate rows. However, ‘470 discloses a plurality of actuable buttons that can be arranged in a plurality of configurations at the discretion of the controller designer. Thus it would have been obvious to one of ordinary skill in the art at the time the invention was filed, to arrange the buttons of ‘470 in two arcuate rows as such is a merely a matter of design choice by the controller designer.
Re claim 2: ‘470 discloses with respect to the apparatus of claim 1, wherein the lever comprises a grip above the top surface of the base, the grip being disposed on a top end of a shaft and extending radially beyond the shaft, the shaft extending through the top surface of the base (see Fig. 1, object 32: the joystick comprises of a grip that is in the shape of a contorted ball, and thus it extends radially outward).
Claims 3, 6-9, 10, and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over ‘470 in view of (U.S. Patent No. 11,969,646).
Re claims 3, 6, 7, 9, 10, 13, 14: Although ‘470 discloses the use of an actuator, (see Fig. 17, object 36) ‘470 fails to disclose with respect to the apparatus of claim 2, comprising an actuator coupled to the shaft, the actuator moving with the shaft and being coupled to at least one magnet to generate analog signals. However, ‘646 discloses a joystick with a bottom portion that acts as an actuator that moves a diametric disk magnet towards magnetometers (or Hall Effect sensors) to create analogy signals. Said magnetic sensors are radially spaced with 90 degrees in between each sensor (see Fig. 3 and column 6, lines 20-40, column 7 , lines 47-67; column 8, lines 1-12). It would have been obvious to one of ordinary skill in the art at the time the invention was made, to substitute the potentmeter joystick signal system of ‘470 for the magnets and magnetic sensors joystick signal system of ‘646 as such would have produced the predictable results of using magnet based analog signals in the joystick system of ‘646.
Re claim 8: ‘470 discloses that the apparatus of claim 1, wherein the shaft is integrally made with a collar that rocks in a receptacle of the base when the lever is moved (see Fig. 8, object 21: joystick collar).
Re claim 15 and 17: ‘470 discloses with respect to the CSC of claim 10, wherein the shaft is integrally made with a collar that rocks in a receptacle of the base when the lever is moved (see Fig. 8, object 21: joystick collar).
Re claim 16: ‘470 discloses with respect to the CSC of claim 10, wherein the grip extends radially beyond the shaft (see Fig. 1, object 32: the joystick comprises of a grip that is in the shape of a contorted ball, and thus it extends radially outward).
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(s) 4, 5, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Gassoway (U.S. PGPUB 2017/0001106).
Re claim 4, 5,11, and 12: ’479 in combination with ‘646 fails to disclose with respect to the apparatus of claim 3, wherein the actuator is coupled to the shaft by a pin extending in the actuator and the shaft. However, Gassoway discloses a joystick, wherein a pin/screw connects an upper portion, to a lower actuator portion (Fig. 4, 406). While the upper portion is for a thumb joystick and not for a shaft and grip, because ‘470 discloses that the upper portion is shaft and grip, it is reasonable to assume that the pin would connect the actuator to the upper portion which is a shaft. Because the pin also is threaded, it also is considered a screw. It would have been obvious to one of ordinary skill in the art to modify the joystick of ‘470 with the pin or screw for the purpose of better securing the shaft and grip to the actuator and thus making the joystick more durable.
Regarding Claim 18, a majority of the claim language was previously addressed in the discussion of claim 3. However, ’470 in view of ‘646 fails to disclose engaging an actuator with the shaft near a second end thereof using a set screw or pin. However, Gassoway discloses a thumb joystick, wherein a pin/screw connects an upper portion, to a lower actuator portion (Fig. 4, 406). While the upper portion is for a thumb joystick and not for a shaft and grip, because ‘470 discloses that the upper portion is shaft, it is reasonable to assume that the pin would connect the actuator to the upper portion which is a shaft. Because the pin also is threaded, it also is considered a screw. It would have been obvious to one of ordinary skill in the art to modify the joystick of ‘470 with the pin or screw for the purpose of better securing the shaft and grip to the actuator and thus making the joystick more durable.
Re claim 19 and 20: ‘470 in view of Gassoway fails to disclose with respect to the method of claim 18, comprising engaging the actuator with one and only on disk-shaped magnet. However, as stated above ‘646 discloses a joystick that includes an actuator that connects to one diametric disk magnet (see Fig. 3 and column 6, lines 20-40, column 7 , lines 47-67; column 8, lines 1-12). It would have been obvious to one of ordinary skill in the art at the time the invention was made, to substitute the potentmeter joystick signal system of ‘470 for the magnets and magnetic sensors joystick signal system of ‘646 as such would have produced the predictable results of using magnet based analog signals in the joystick system of ‘646.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REGINALD A RENWICK whose telephone number is (571)270-1913. The examiner can normally be reached Monday-Friday 11am-7pm.
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REGINALD A. RENWICK
Primary Examiner
Art Unit 3714
/REGINALD A RENWICK/Primary Examiner, Art Unit 3715