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 Amendment
Prior to examination, claims 1 – 20 were cancelled and claims 21 – 40 were added. Claims 21 – 40 are now pending in the current application.
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 21 - 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 17 of U.S. Patent No. 12,179,094.
Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are drawn towards the system and method claim versions of the parent 12,179,094, except the current claims do not include the processor being operable to communicate an audio message to a headset, instead the current claims disclose communicating an alert to a headset. Therefore the current claims are a broader version of the parent claims regarding this feature, as shown in table below. Independent claims 28 and 35 include similar language to that of independent claim 1, wherein dependent claims 22 – 27, 29 – 34, and 36 - 40, include identical language as the dependent claims in the parent 12,179,094. Therefore the claims are not patentably distinct.
Pending Claim 1:
Patented Claim 1:
A game controller comprising: a processor configured to: communicate one or more messages via a social network, and communicate an alert to a headset; and a screen configured to display the one or more messages
A system comprising: a game controller configured to operate a video game console, the game controller comprising: a processor configured to communicate one or more messages via a social network, wherein the processor is operable to communicate an audio message to a headset; and a screen, operably coupled to the processor, configured to display the one or more messages to a user of the game controller.
Claim Rejections - 35 USC § 102
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 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 21 – 40 are rejected under 35 U.S.C. 102(a) as being anticipated by Beltran et al. (U.S. 2019/0366210).
Regarding claims 21, 28, and 35, Beltran discloses a game controller, game controller method, and a computer-readable medium comprising a game controller, (“ the primary user 416 operates an input device 414 that is operatively connected to the primary client device 412, to provide input for the video game”, par. 0078), wherein Beltran discloses a further embodiment wherein a client device may be a handheld gaming device that presents video to a player of a game, (“Clients 1610, referred to herein individually as 1610A, 1610B, etc., may include head mounted displays, terminals, personal computers, game consoles, tablet computers, telephones, set top boxes, kiosks, wireless devices, digital pads, stand-alone devices, handheld game playing devices, and/or the like. Typically, Clients 1610 are configured to receive encoded video streams, decode the video streams, and present the resulting video to a user, e.g., a player of a game”, par. 0116), wherein the Examiner views the handheld gaming device, (client device 1610), as a game controller comprising a processor. Beltran further discloses communicating one or more messages via a social network, (“a social network can be leveraged in such a team gaming scenario. For example, the system may enable the team captain to send an invite to a member of their social graph, for example, that possesses a certain skill or experience. By way of example without limitation, such an invite could be sent via the social network or through other communication channels such as an e-mail, text message, instant message”, par. 0070). Beltran further discloses a headset that is controlled by a user that is in communication with the gaming system, (“a head-mounted display can provide a visually immersive virtual reality experience to the user, as the HMD renders a three-dimensional real-time view of the virtual environment in a manner that is responsive to the user's movements”), wherein Beltran further discloses that users may receive notifications about each other's gameplay, (“Users may receive notifications about each other's gameplay”, par. 0050), wherein the Examiner views this as a user of the HMD receiving a notification as being equivalent to a headset receiving an alert. Beltran discloses, as cited above, that the game controller may be handheld gaming device, (client device 1610), wherein Beltran further discloses that the input device of client device 1610 may include a touch screen, (“Input devices of Clients 1610 may include, for example, a one-hand game controller, a two-hand game controller, a gesture recognition system, a gaze recognition system, a voice recognition system, a keyboard, a joystick, a pointing device, a force feedback device, a motion and/or location sensing device, a mouse, a touch screen”, par. 0119), wherein the Examiner the handheld gaming device including a touch screen as being equivalent to a game controller comprising a screen, and Beltran’s teaching above of a the gaming system receiving social network messages, (such an invite could be sent via the social network or through other communication channels such as an e-mail, text message, instant message”, par. 0070), as being equivalent to a screen displaying one or more social network messages.
Regarding claims 22 and 29, Beltran discloses wherein the game controller is configured, via an app, to communicate the one or more messages, (“In some implementations, the gaming platform can be configured to access other communication channels, e.g. a separate social network, e-mail, text messaging service, etc., and send the invitation through such channels”, par. 0099), wherein the Examiner views accessing a separate social network as being equivalent communicating via an app.
Regarding claims 23 and 30, Beltran discloses wherein the app is accessible via a smartphone, (“The primary client device 412 receives the video data and renders it to a display device, which may be separate from (e.g. television, monitor, head-mounted display or virtual reality headset, etc.) or incorporated into (e.g. laptop, tablet, smartphone, etc.) the primary client device”, par. 0077).
Regarding claims 24 and 31, Beltran discloses wherein the app is accessible via a tablet, (“The primary client device 412 receives the video data and renders it to a display device, which may be separate from (e.g. television, monitor, head-mounted display or virtual reality headset, etc.) or incorporated into (e.g. laptop, tablet, smartphone, etc.) the primary client device”, par. 0077).
Regarding claims 25, 32, and 39, Beltran discloses wherein the screen is configured to display the one or more messages while the game controller is in use, (“the primary user sends an invitation to the secondary user to join a shared gameplay session. The invitation can appear to the secondary user as a notification, private message, etc. In some implementations, the gaming platform can be configured to access other communication channels, e.g. a separate social network”, par. 0099), wherein the Examiner views sending the message to join a gameplay session as being equivalent displaying one or more messages while the game controller is in use.
Regarding claims 26 and 33, Beltran discloses wherein the screen is touch sensitive, (“a touch screen”, par. 0119).
Regarding claims 27 and 34, Beltran discloses wherein the screen is configured to allow a transmission of a response to a message of the one or more messages, (“in response to the secondary user accepting the invitation, then the primary user's video stream is shared with the secondary user).
Regarding claim 36, Beltran discloses wherein the game controller comprises the non-transitory computer-readable medium and the processor, (“Clients 1610, referred to herein individually as 1610A, 1610B, etc., may include head mounted displays, terminals, personal computers, game consoles, tablet computers, telephones, set top boxes, kiosks, wireless devices, digital pads, stand-alone devices, handheld game playing devices, and/or the like. Typically, Clients 1610 are configured to receive encoded video streams, decode the video streams, and present the resulting video to a user, e.g., a player of a game”, par. 0116), wherein the Examiner views the handheld gaming device, (client device 1610), as a game controller comprising a processor and a computer-readable medium.
Regarding claim 37, Beltran discloses wherein a mobile device, external to the game controller, comprises the non-transitory computer-readable medium and the processor, (“The primary client device 412 receives the video data and renders it to a display device, which may be separate from (e.g. television, monitor, head-mounted display or virtual reality headset, etc.) or incorporated into (e.g. laptop, tablet, smartphone, etc.) the primary client device”, par. 0077).
Regarding claim 38, Beltran discloses wherein the mobile device is one of a smartphone and a tablet, (“The primary client device 412 receives the video data and renders it to a display device, which may be separate from (e.g. television, monitor, head-mounted display or virtual reality headset, etc.) or incorporated into (e.g. laptop, tablet, smartphone, etc.) the primary client device”, par. 0077).
Regarding claim 40, Beltran discloses wherein the method comprises responding to a message of the one or more messages, (“in response to the secondary user accepting the invitation, then the primary user's video stream is shared with the secondary user), by touching the screen of the game controller, (“a touch screen”, par. 0119).
References not cited
Sternberg (U.S. 2012/0289337), wherein Sternberg discloses a game controller comprising a display screen, see fig. 2 part 20.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC M THOMAS whose telephone number is (571)272-1699. The examiner can normally be reached 9:00am - 5:00pm.
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/E.M.T/Examiner, Art Unit 3715
/JUSTIN L MYHR/Primary Examiner, Art Unit 3715
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