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.
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Claims 1-14 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,109,486. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application are broader in scope than the claims presented in in said patent and overlap in scope.
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.
Claim(s) 1-4, 7 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 1,524,592 by Donny.
Regarding claim 1, Donny discloses a device, comprising: a central control (CC) button operable to send a signal to a computerized apparatus when the computerized apparatus is in communication with the device (abstract; fig. 1; element 22), the CC button being in the center of a base (fig. 1 – see the location of the button 22 in the center of the base. Examiner noting that Applicant’s broad claim language leaving the location of the “center of the base” undefined. Examiner mapping that center to the center of the base section below 22.); and plurality of peripheral control (PC) buttons on the base surrounding the CC button with azimuthal spacings between adjacent PC buttons being equal around the CC button (fig. 1 and 3 – see the equal azimuthal spacing between the center two buttons of the four buttons shown on the left of the figure, this equal spacing of with respect to the adjacent buttons of those two center buttons. Examiner noting that the claims leave open the number of buttons that are required.), each PC button being operable to send a signal to a computerized apparatus when the computerized apparatus is in communication with the device (fig. 1; elements 15-20).
Regarding claim 2, Donny discloses the device of Claim 1, wherein the CC button is round (fig. 1 – the round CC button 22).
Regarding claim 3, Donny discloses the device of Claim 1, wherein the computerized apparatus comprises a computer simulation console (para. 1 – see videogame consoles).
Regarding claim 4, Donny discloses the device of Claim 1, wherein the computerized apparatus comprises a computer simulation server (para. 1 – see PCs).
Regarding claim 7, Donny discloses a central control (CC) button operable to send a signal to a computerized apparatus when the computerized apparatus is in communication with the device (abstract; fig. 1; element 22); and a plurality of peripheral control (PC) buttons surrounding the CC button (fig. 1- see surrounding buttons), each being operable to send a signal to a computerized apparatus when the computerized apparatus is in communication with the device wherein at least a first one of the PC buttons is individually detachably engaged with a base holding the CC button and PC buttons (fig. 4; para. 29 – see the detachable base in the exploded view of the input device that holds the buttons).
Regarding claim 17, Donny discloses the computer simulation control apparatus of claim 1, wherein the first number is seven (fig. 1; 15-20 – see the seven buttons surrounding button 22).
Claim(s) 1, 4, 6, 8-9 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent 5,874,906 by Willner.
Regarding claim 1, Willner discloses a device, comprising: a central control (CC) button (150; fig. 1) operable to send a signal (302, 213, 332; fig. 5; col. 8, ln. 40-61) to a computerized apparatus (300, 310, 330; fig. 5; col. 3, ln. 42-67) when the computerized apparatus is in communication with the device (100, fig. 1), the CC button being in the center of a base (fig. 1 – see the location of the button 22 in the center of the base. Examiner noting that Applicant’s broad claim language leaving the location of the “center of the base” undefined. Examiner mapping that center to the center of the base section below 150.); and a plurality of peripheral control (PC) buttons on the base surrounding the CC button with azimuthal spacings between adjacent PC buttons being equal around the CC button (fig. 1 – see the equal azimuthal spacing between the buttons), each PC button being operable to send a signal to a computerized apparatus when the computerized apparatus is in communication with the device (see signal transmission as noted above).
Regarding claim 4, Willner discloses the device of Claim 1, wherein the computerized apparatus comprises a computer simulation server (330, fig. 5; col. 3, ln. 42-67).
Regarding claim 6, Willner discloses a device (100; fig. 1; abstract), comprising: a central control (CC) button (150; fig. 1) operable to send a signal (302, 213, 332; fig. 5; col. 8, ln. 40-61) to a computerized apparatus (300, 310, 330; fig. 5; col. 3, ln. 42-67) when the computerized apparatus is in communication with the device (100, fig. 1); and a plurality of peripheral control (PC) buttons (126, 129, 138, 140, 142, 144, 146, 148, 156, fig. 1) surrounding the CC button (100; fig. 1), each being operable to send a signal (302, 312, 332, fig. 5; col. 8, ln. 40-61) to a computerized apparatus (300, 310, 330; fig. 5; col. 3, ln. 42-67) when the computerized apparatus is in communication with the device (100; fig. 1), wherein a first one (128, fig. 1) of the PC buttons (126, 129, 138, 140, 142, 144, 146, 148, 156, fig. 1) comprises a top surface bounded by a periphery, the top surface being continuously curved within the periphery from an inner periphery of the first one of the PC buttons closest to the CC button to an outer part of the periphery of the first one of the PC buttons (fig. 1 – see the continuous circular contour of the periphery of the top surface of the buttons).
Regarding claim 8, Willner discloses the device of Claim 1, wherein at least a first one of the PC buttons viewed from the top (128; fig. 1 – see the oval contour of the buttons, Examiner notes that how and where the top surface has a continuously curved contour is broadly limited and if particular spatial arrangements are required they should be recited) comprises a curved inner periphery closest to the CC button and sides flaring outwardly to a curved outer periphery of the first one of the PC buttons, the curved outer periphery being larger than the curved inner periphery (fig. 1 – see the button 128 that has a larger curve on the outside and an smaller curve on the inside relative to the central button).
Regarding claim 9, Willner discloses the device of Claim 8, wherein at least a second one of the PC buttons viewed from the top comprises a curved inner periphery closest to the CC button and sides flaring outwardly to a curved outer periphery of the second one of the PC buttons, the curved outer periphery being larger than the curved inner periphery, the second one of the PC buttons being larger than the first one of the PC buttons (fig. 1 – see button 126 having the same qualities as noted above in claim 8 regarding button 128).
Regarding claim 19, Willner discloses this claim as mapped above regarding claim 8.
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) 5 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Donny and further in view of U.S. Patent 4,560,844 by Takamura.
Regarding claims 5 and 18, Donny discloses the devices of claim 1 and 7, but does not specifically teach wherein a first one of the PC buttons comprises an upwardly-sloping outer region. However, Takamura teaches a device (Fig. 6; abstract) wherein a first one of the PC buttons (27, Fig. 6) comprises an upwardly-sloping outer region having a different slope than an inner region of the first one of the PC buttons (Fig. 6 - the outer sloping region of the key-switches following curve 62; col 9, In 9-17. Each slope being different in spatial position to the other slopes.). Accordingly, it would have been obvious to one of ordinary skill in the art to have substituted the shapes of the buttons, based on the teaching of Takamura, for the purpose of providing an ergonomic surface for the user, and as a routine substitution of a known equivalent type of buttons for performing the same function.
Claim(s) 10-11 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Willner and further in view of U.S. Publication 2007/0060392 by Sullivan.
Regarding Claim 10, Willner discloses the device of Claim 8, wherein at least a second one (126, Fig. 1) of the PC buttons viewed from the top comprises a curved inner periphery (Fig. 1 - the side of 126 closest to button 150) closest to the CC button and sides flaring outwardly to a curved outer periphery (Fig. 1 - the side of 126 furthest to button 150) of the second one of the PC buttons, the curved outer periphery (Fig. 1 - the side of 126 furthest to button 150 is larger than the side of 126 closest to button 150) being larger than the curved inner periphery, the second one (126, Fig. 1) of the PC buttons being larger than the first one (128, Fig. 1) of the PC buttons, and the curved inner periphery (Fig. 1 - the concave side of 126 closest to button 150) of the second one of the PC buttons being concave, but does not specifically teach wherein the curved inner periphery of the first one of the PC buttons is convex. However, Sullivan teaches a device (Fig. 2; abstract) wherein a curved inner periphery (Fig. 2 - the upper surface of buttons 208 closest to button 214) of a first one (208, Fig. 2) of the PC buttons (208, 212, Fig. 2) is convex (Fig. 2 - the upper convex surface of buttons 208). It is known that optimization of size, shape, and scale through routine experimentation is an ordinary skill in the art and it is well known in the art that routine experimentation and various design engineering choices could have been used to have arrived at modifying the shape and size of the buttons. Accordingly, it would have been obvious to one of ordinary skill in the art to have modified the shape and size of the buttons to provide a more user friendly controller depending on different user's characteristics, as desired or necessary to meet the requirements of a particular implementation.
Regarding Claim 11, Willner discloses wherein the second one of the PC buttons is larger than the first one of the PC buttons (fig. 1 – see the relative sizes of buttons 126 and 128).
Regarding Claim 20, Willner discloses the device of claim 19, wherein at least a second one (126, Fig. 1) of the PC buttons viewed from the top comprises a curved inner periphery (Fig. 1 - the side of 126 closest to button 150) closest to the CC button and sides flaring outwardly to a curved outer periphery (Fig. 1 - the side of 126 furthest to button 150) of the second one of the PC buttons, the curved outer periphery (Fig. 1 - the side of 126 furthest to button 150 is larger than the side of 126 closest to button 150) being larger than the curved inner periphery, the second one (126, Fig. 1) of the PC buttons being larger than the first one (128, Fig. 1) of the PC buttons, and the curved inner periphery (Fig. 1 - the concave side of 126 closest to button 150) of the second one of the PC buttons being concave, but does not specifically teach wherein the curved inner periphery of the first one of the PC elements is convex. However, Sullivan teaches a device (Fig. 2; abstract) wherein a curved inner periphery (Fig. 2 - the upper surface of buttons 208 closest to button 214) of a first one (208, Fig. 2) of the PC buttons (208, 212, Fig. 2) is convex (Fig. 2 - the upper convex surface of buttons 208). It is known that optimization of size, shape, and scale through routine experimentation is an ordinary skill in the art and it is well known in the art that routine experimentation and various design engineering choices could have been used to have arrived at modifying the shape and size of the buttons. Accordingly, it would have been obvious to one of ordinary skill in the art to have modified the shape and size of the buttons to provide a more user friendly controller depending on different user's characteristics, as desired or necessary to meet the requirements of a particular implementation.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Willner and further in view of U.S. Publication 2007/0052177 by Ikeda.
Regarding Claim 12, Willner discloses the device of Claim 1, wherein at least a first one (156, Fig. 1) of the PC buttons (126, 128, 138, 140, 142, 144, 146, 148, 156, Fig. 1) viewed from the top comprises a shaped periphery (Fig. 1 - the shape of the periphery of 156), but does not specifically teach wherein at least a first one of the PC buttons viewed from the top comprises a periphery with convex sides between curved inner and outer peripheries. However, Ikeda teaches a device (10, Fig. 1; abstract) wherein at least a first one (30, Fig. 1) of the PC buttons (30, 32, Fig. 1; para. 80) viewed from the top comprises a periphery with convex sides between curved inner and outer peripheries. (Fig. 1 - see the periphery of 30). Accordingly, it would have been obvious to one of ordinary skill in the art to have modified the shape and size of the buttons to provide a more user friendly controller depending on different user's characteristics, as desired or necessary to meet the requirements of a particular implementation.
Regarding Claim 13, Willner discloses the device of Claim 1, wherein at feast a first one (156, Fig. 1) of the PC buttons (126, 128, 138, 140, 142, 144, 146, 148, 156, Fig. 1) viewed from the top comprises a shaped periphery (Fig. 1 - the shape of the periphery of 156), but does not specifically teach wherein at least a first one of the PC buttons viewed from the top comprises a periphery with straight sides between curved inner and outer peripheries. However, Ikeda teaches a device (10, Fig. 1; abstract) wherein at least a first one (30, Fig. 1) of the PC buttons (30, 32, Fig. 1; para. 80) viewed from the top comprises a periphery with straight sides between curved inner and outer peripheries. (Fig. 1 - the periphery with straight sides between curved inner and outer peripheries of 30). Accordingly, it would have been obvious to one of ordinary skill in the art to have modified the shape and size of the buttons to provide a more user friendly controller depending on different user's characteristics, as desired or necessary to meet the requirements of a particular implementation.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Donny and further in view of U.S. Publication 2016/0361635 by Microsoft.
Regarding Claim 14, Donny discloses the device of Claim 7, but does not specifically teach wherein at least the first one of the PC buttons is magnetically engaged with the base. However, Microsoft discloses a device (100, Fig. 1-3) wherein a PC button (14A-D, Fig. 1) is magnetically engaged (140, Fig. 4) with a base (118, Fig. 2; para. 28-29). Because the references are from a similar art and concerned with a similar problem, see controllers, it would have been obvious to one having ordinary skill in the art at the time of filing to construct Donny with Microsoft’s Magnetically engaged buttons. One having ordinary skill in the art at the time of filing would have been motivated to do so because allowing for magnetic engagement of the buttons allows for greater user customization and feedback as taught by Microsoft (para. 16-20).
Conclusion
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/PETER J IANNUZZI/ Primary Examiner, Art Unit 3715
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