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 .
Claims 1, 3-7, 9-12, and 16-17 are pending in the instant application. Claims 6, 10 and 16-17 are withdrawn from consideration as been directed to a non-elected species. Claims 2, 8, and 13-15 are canceled and claims 1, 7, 9-12, and 16-17 are amended.
Response to Arguments
Applicant's arguments filed 02/19/2026 have been fully considered but they are not persuasive.
Applicant argued that “[b]ecause the "first determination circuit," "second determination circuit," "transmission circuit," and "pairing state selection circuit" are not interpreted under 35 U.S.C. 112(f), the subsequent rejections under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) based on invocation of 35 U.S.C. 112(f) are rendered moot”, Remarks page 8. Applicant explained that “[s]upport for the amendment is found, for example, in page 8, lines 3-4 of the application ("The sensor controller 31 is an integrated circuit that carries out various types of functions by executing a program implemented as hardware or a program stored in a built-in memory.")”, Remarks page 8.
Examiner respectfully disagrees. As disclosed in applicant’s specification and figure 1 the sensor controller 31 is part of a position detection device 3. Claims 7 and 9-12 are directed to a stylus as depicted in applicant’s figure 2. Applicant’s disclosure is silent with respect to “first determination section”, “second determination section”, “transmission section”, and “paring state section” being circuits. Therefore, the amendment also raises 112(a) written description issues. Moreover, "first determination circuit," "second determination circuit," "transmission circuit," and "pairing state selection circuit" are not well recognized structures in the art. Therefore, the claim construction under 112(f) and rejections under the 112(a) and 112(b) are maintained.
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:
“A position detection device comprising: a detection mode wherein a multiprotocol simultaneous activation uplink signal is transmitted…”, in claim 1;
“a first determination section that determines whether or not a first uplink signal configured to activate the stylus using a first protocol is included in a received signal” , in claim 7;
“a second determination circuit that determines whether or not first subsequent data for activating the stylus using a second protocol different from the first protocol is added to the first uplink signal” , in claim 7;
“the first determination circuit determines that the first uplink signal is included in the received signal” , in claim 7;
“a transmission circuit that transmits a downlink signal using the second protocol…and transmit the downlink signal using a first protocol…” , in claim 7;
“the second determination circuit determines that the first subsequent data is added to the first uplink signal” , in claim 7;
“the first determination circuit further determines whether or not a third uplink signal configured to activate the stylus using a third protocol different from any of the first protocol and the second protocol is included in the received signal”, in claim 9;
“the second determination circuit determines whether or not second subsequent data for activating the stylus using a fourth protocol different from any of the first protocol, the second protocol, and the third protocol is added to the third uplink signal”, in claim 9;
“the first determination circuit determines that the third uplink signal is included in the received signal”, in claim 9;
“the transmission circuit transmits the downlink signal using the fourth protocol”, in claim 9;
“the second determination circuit determines that the second subsequent data is added to the third uplink signal”, in claim 9;
“a determination regarding a received signal is performed by the first determination circuit and the second determination circuit and in a second communication mode in which it is determined whether or not the received signal includes a second uplink signal using the second protocol”, in claim 11;
“the second communication mode is entered in response to a determination by the second determination circuit that the first subsequent data is added to the first uplink signal”, in claim 11;
“a pairing state selection circuit that selects whether or not to continue pairing with a position detection device in a case where the second communication mode has been entered”, in claim 12;
“cancellation of the pairing with the position detection device is selected by the pairing state selection circuit, the stylus returns from the second communication mode to the detection mode”, in claim 12.
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 § 112
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 and 3-5 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim (claim 1) purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim. Claims 3-5 depend directly or indirectly from claim 1, therefore are also rejected under 35 U.S.C. 112(a).
Claims 7, 9, and 11-12 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 claims 7, 9, and 11 recite “first determination section”, “first determination circuit”, “second determination circuit”, and “transmission circuit”; claim 12 recites “paring state circuit”. The specification and drawings do not clarify what the applicant claims as section and circuits. There is insufficient description of those section and circuits and how the functions are performed or the results are achieved for the above functional language limitations. The specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. Thus, the specification lacked the “full, clear, concise, and exact written description” which is necessary to support the claimed invention. As a result, a person skilled in the art cannot carry out the invention according to the disclosure of the present application. Therefore, the claims fail to comply with the written description requirement.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7, 9 and 11-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 7, 9 and 11-12 as disclosed above, invoke being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, and recites in a “combination” (Id.), inter alia:
“first determination section” (claim 7)
“first determination circuit” (claims 7, 9, and 11 );
“second determination circuit” (claims 7, 9, and 11);
“transmission circuit” (claims 7, and 9);
“paring state circuit” (claim 12).
After a careful analysis, as disclosed in the claim construction above, the specification does not disclose the corresponding structure, material, or acts in accordance with 112(f) for limitations i-v.
Failure to disclose a structure corresponding to the means-plus-function limitation for performing the recited function renders the claim indefinite under 35 U.S.C. 112(b).
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
Claim 7 recites the limitation “first determination circuit” in lines 6-7. There is insufficient antecedent basis for this limitation in the claim.
Allowable Subject Matter
Claims 1 and 3-5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) set forth in this Office action.
Claims 7, 9 and 11-12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) and 35 U.S.C. 35 U.S.C. 112(a) set forth in this Office action.
Conclusion
THIS ACTION IS MADE FINAL. 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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/IM/Examiner, Art Unit 2626
/TEMESGHEN GHEBRETINSAE/Supervisory Patent Examiner, Art Unit 2626 6/3/26B
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