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 .
Preliminary Amendment
Applicant submitted a preliminary amendment, presently claims 21-40 are pending.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/808339, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Application No. 16/808339 does not provide support for “a magnetic connector” as such the majority of the claims have priority back to 07/01/2022. However, 18/195152 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for claims 27, 35, and 40.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: claims 27, 35, and 40 do not have antecedent basis within the originally filed specification.
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.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,145,053 in view of US Patent Application Publication No. 2020/0078760 to Oh.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,115,443 in view of US Patent Application Publication No. 2020/0078760 to Oh.
With regard to both ‘053 and ‘443 each of these patents claims limitations that are far more specific than the present application. However, ‘053 does not claim electrical connection, but such is taught by Oh (0055). Furthermore ‘443 does have an electrical connection claim in claim 3 which depends from 1 and further is also taught by Oh (0055). It would have been obvious to make such combinations in order to have a data transfer so that the gaming device and the mobile device would be able to talk to each other.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 21-28, 31-35, 39 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication No. 2023/0182011 to Vroom in view of US Patent Application Publication No. 2020/0078670 to Oh.
With regard to claim 21, Vroom discloses a handheld game controller comprising: a first handle; a second handle (fig 1, elements 105, 110); a magnetic connector positioned between the first and second handles, wherein the magnetic connector is configured to magnetically retain a mobile device to the handheld game controller (0072-0073).
Vroom does not appear to be explicitly clear about an electronic connector in the handles. However, Oh teaches an electrical connector on one of the first and second handles, wherein the electrical connector is configured to physically connect with a corresponding electrical connector on the mobile device to provide transfer of data between the mobile device and the handheld game controller (0075).
With regard to claim 22¸Vroom discloses that the first and second handles are movable between an extended position and a retracted position (figs. 1, 2).
With regard to claim 23¸the combination of Vroom and Oh discloses in the extended position, a span between the first and second handles allows the mobile device to be positioned between the first and second handles to be magnetically retained by the magnetic connector and physically connected with the electrical connector on one of the first and second handles (Vroom at fig. 8; 0072-0073; Oh at 0055).
With regard to claim 24, Vroom discloses in the retracted position, the first and second handles contact side surfaces of the mobile device to physically retain the mobile device to the handheld game controller, wherein the mobile device is both magnetically retained by the magnetic connector and physically retained by the first and second handles (fig. 8; 0072-0073).
With regard to claim 25, Vroom discloses an overhang portion configured to contact a top surface of the mobile device when the first and second handles are in the retracted position (fig. 3 elems 145, 150; fig. 11E elems 975, 985).
With regard to claim 26, the combination of Vroom and Oh teaches wherein the electrical connector comprises a USB-C connector (Vroom at 0084; Oh at 0075).
With regard to claim 27, Vroom discloses wherein the magnetic connector is configured to provide wireless charging but not wireless transfer of data between the mobile device and the handheld game controller (0072-0073).
With regard to claim 28, Vroom discloses a bridge in sliding engagement with the first and second handles, wherein the magnetic connector is in the bridge (0072-0073).
Claims 31-36, 39, and 40 are similar claims to claims 21-28 and are rejected in like manner.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to combine the teachings of Oh with the disclosure of Vroom in order to provide a physical data connection that is more secure between the gaming device and the mobile device.
Claims 29, 30, 37, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Vroom in view of Oh as applied to claims 21, 28, 31 and 36 above, and further in view of US Patent Application Publication No. 2019/0358534 to Fang.
With regard to claims 29 and 37, Vroom does not appear to explicitly disclose a first rack and a second rack working together with a pinion. However, Fang teaches a first linear rack coupled to the first handle and in sliding engagement with the bridge; a second linear rack coupled to the second handle and in sliding engagement with the bridge; and a pinion in contact with the first and second linear racks, the pinion configured to rotate relative to the bridge as the first and second linear racks are translated relative to the pinion (figs. 4A-4B; 0042).
With regard to claims 30 and 38, Fang teaches the first linear rack is located partly in the first handle and partly in the bridge; and the second linear rack is located partly in the second handle and partly in the bridge (figs. 4A-4B; 0042).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to combine the teachings of Fang with the disclosure of Vroom as a known substitution of sliding mechanisms such as replacing a telescoping slide with a rack and pinion slide.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jay Liddle whose telephone number is (571)270-1226. The examiner can normally be reached M-F 9-5.
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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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/Jay Trent Liddle/ Primary Examiner, Art Unit 3715
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