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
Applicant’s amendment, filed 24 December 2025, is reviewed and entered. This Office Action is a final rejection.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Status of Claims
Amended
1 and 5
Withdrawn
6-20
Pending
1-20
Presented for Examination
1-5
Response to Arguments
Applicant's arguments filed 24 December 2025 have been fully considered but they are not persuasive.
112(b) Rejections
Overcome by the amendment and withdrawn.
102 Rejections
Regarding the rejection of claim 1, Applicant argues Wallace’s attachment device/ pocket 22 is fundamentally different from an opening trough which a controller handle extends because it does not “engage opposite sides of the handle of the controller.” Applicant is reminded that the handle of the controller is a functional recitation that is not a structural requirement of the claim. It is noted that Applicant’s disclosure is silent as to which portion(s) of the handle are the “opposite sides,” so this limitation has been interpreted as best understood. Nevertheless, Wallace FIG 1 shows 22 engaging “opposite sides” of the handle, where the “opposite sides” may be the top and bottom sides of the handle 30 (i.e., in FIG 1, the side proximate the wearer’s thumb and the side proximate the wearer’s little finger) or inner and outer face sides of the handle 30 (i.e., the side contacting the palm of the glove and the side contacting 22).
Applicant does not separately argue against the rejections of claims 2-3.
103 Rejections
Applicant does not separately argue against the 103 rejections.
In light of the above, the rejections are believed to be proper.
Election/Restrictions
Applicant previously elected Invention I, the gamer glove of claims 1-11 and Species A(i) shown in FIGS 1A-4 and corresponding to claims 1-5.
The requirement is made FINAL.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “wherein the attachment device and the palm side of the glove engage opposite sides of the handle of the controller” (claim 1, this objection may be overcome by providing one or more of the existing figures with reference numbers for the “opposite sides”) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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: “an attachment device fixedly coupled to the palm side” (claim 1), and specifically the recitation “fixedly coupled,” because the specification only has support for “coupled” but is silent as to any particular type of coupling and “wherein the attachment device and the palm side of the glove engage opposite sides of the handle of the controller” (claim 1).
Claim Rejections - 35 USC § 112(a)
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.
Claims 1-5 are 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(s) 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. The new matter is “an attachment device fixedly coupled to the palm side” (claim 1), and specifically the recitation “fixedly coupled,” because the specification only has support for “coupled” but is silent as to any particular type of coupling.
Claims that depend from a rejected claim are also rejected under 112.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: "attachment device" claim 1 and "gripping member" in claim 4.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wallace (US 5088121 A).
As to claim 1, Wallace discloses a gamer glove (“Glove with a pocket for holding Mace and a method of making same,” title, capable of being worn by a gamer or worn during gaming) comprising:
a glove body portion (21; Fig. 1) having a palm side (shown in Fig. 1) and a back side (the back of the glove 20),
an attachment device (22) fixedly coupled to the palm side of the glove (Fig. 1; col 2 line 55 – col 3 line 5 discloses 22 may be sewn or coupled via mechanical fasteners, and sewing or mechanical fasteners will remain “fixed” unless acted on by an outside force) and
an opening formed between the attachment device (22) and palm side of the glove (see Figs. 1 and 5; col. 2, lines 29-34 and 57-61), wherein the opening is sized to receive a handle of a controller therethrough such that the handle extends through the opening, and wherein the attachment device and the palm side of the glove engage opposite sides of the handle of the controller to secure the controller to the glove (the opening is capable of receiving a handle in the manner claimed, such as a handle of similar size and shape to 32; col. 2, lines 34-40)
Regarding the recitation under 35 USC 112(f) of an "attachment device", the attachment device of Wallace has the same structure (the pocket 22 may be open at both ends thus forming a strap structure; col. 3, line 14; or may have a strap structure 60) and function (to attach an object) as that disclosed by applicant. With respect to the recitation in claim 1 of the glove being a "gamer glove", this amounts to the intended use of the claimed device. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Regarding claim 2, Wallace discloses the attachment device (22) may be a pocket which is open at both ends (col. 3, line 14). This forms a strap structure as claimed. The strap (the pocket open at both ends) is coupled to the palm side of the glove, as in claim 2 (Fig. 1; col. 2, lines 57-58). Also, the hand cover of the embodiment of Fig. 6 forms a glove as broadly recited in claim 1, and has an attachment device as claimed, in the form of a strap 60 coupled to the palm side of the glove 36 (see Fig. 6).
Regarding claim 3, the strap (22) is formed of an elastomeric material (the pocket is formed of rubber as disclosed in col. 3, lines 11-12; rubber is an elastomeric material).
Claim Rejections - 35 USC § 103
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wallace (US 5088121 A) as applied to claim 3 above, and further in view of Rios (US 20100183814 A1).
As to claim 4, Wallace does not disclose the gamer glove of claim 3, wherein the strap comprises at least one gripping member, wherein the at least one gripping member is coupled to an inner surface of the strap.
It is noted that "gripping member" in claim 4 is being interpreted as reciting a means for gripping under 35 USC 112(f), this means being disclosed by applicant as being silicone or other types of gripping material or material with increased friction.
Wallace col 3 line 10-15 does disclose the inner surface of the strap may be “non-skid” to prevent the contents of the strap from sliding out of the strap. Therefore, although Wallace does not expressly disclose a gripping member coupled to the inner surface of the strap, Wallace does disclose the inner surface of the strap has increased grip, and a gripping member coupled to an inner surface of the strap is within the scope of the Wallace reference.
Rios discloses a gripping surface which comprises silicone coupled to a surface to improve grip of a hand held article [0002-0003, 0006-0007]. The silicone grip comprises a silicone layer 4 on a substrate (see Figs. 3-10 and 14-18). The grip of Rios comprises a gripping member (silicone coating) coupled to a surface of the article as in claim 4 [0078, 0141,146]. The gripping member is formed of silicone as in claim 5 [0080]. Rios teaches that the silicone grips are especially useful in applications where a slip resistant surface is desired on a contoured or curved surface [0078]. Rios teaches that the article having the silicone grip may be a strap [0141, 0146]. Rios specifically discloses that the silicone grip is useful for "strap linings" [0146]. Rios also discloses that the substrate or support layer for the silicone coating may be rubber, latex, or neoprene [0085, 0097- 0098, 0133]. Therefore, one of skill in the art would recognize that the silicone gripping surface of Rios would be advantageous for use in the strap 22 of Wallace to enhance the nonslip properties of the strap.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide silicone gripping members on the inner surface of the strap of Wallace in order to provide enhanced gripping of item being held, as taught by Rios.
As to claim 5, Wallace as modified discloses the gamer glove of claim 4, wherein the at least one gripping members member is formed of silicone (this is the result of the modification presented in the rejection of claim 4 above).
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.
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/CLINTON T OSTRUP/Supervisory Patent Examiner, Art Unit 3732