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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 11,389,721 in view of US 20230182011 to Vroom et al. (hereinafter Vroom). The instant claims are not patentably distinct from the patent claims because they are directed to substantially similar subject matter as the patent claims. More particularly, both sets of claims are directed to a game controller that engages with a mobile device, the game controller comprising first and second handles having a bridge therebetween which allow for adjustable engagement with the handles and connect to the mobile device. The patent claims comprise substantially similar subject matter except that they do not include the magnetic features of the instant claims. Regardless, it would have been obvious to one of ordinary skill in the art before the effective date to modify the patent claims to include the magnetic features of Vroom (discussed further below) in order to allow convenient attachment of mobile devices such as smart phones.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,839,810 in view of US 20230182011 to Vroom et al. (hereinafter Vroom). The instant claims are not patentably distinct from the patent claims because they are directed to substantially similar subject matter as the patent claims. More particularly, both sets of claims are directed to a game controller that engages with a mobile device, the game controller comprising first and second handles having a bridge therebetween which allow for adjustable engagement with the handles and connect to the mobile device. The patent claims comprise substantially similar subject matter except that they do not include the magnetic features of the instant claims. Regardless, it would have been obvious to one of ordinary skill in the art before the effective date to modify the patent claims to include the magnetic features of Vroom (discussed further below) in order to allow convenient attachment of mobile devices such as smart phones.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11,826,642 in view of US 20230182011 to Vroom et al. (hereinafter Vroom). The instant claims are not patentably distinct from the patent claims because they are directed to substantially similar subject matter as the patent claims. More particularly, both sets of claims are directed to a game controller that engages with a mobile device, the game controller comprising first and second handles having a bridge therebetween which allow for adjustable engagement with the handles and connect to the mobile device. The patent claims comprise substantially similar subject matter except that they do not include the magnetic features of the instant claims. Regardless, it would have been obvious to one of ordinary skill in the art before the effective date to modify the patent claims to include the magnetic features of Vroom (discussed further below) in order to allow convenient attachment of mobile devices such as smart phones.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/369000 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to substantially similar subject matter. More particularly, both sets of claims are directed to a game controller that engages with a mobile device, the game controller comprising first and second handles having a bridge therebetween which allow for adjustable engagement with the handles and connect to the mobile device using a magnetic connection.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-7, 9-13, and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20230182011 to Vroom et al. (hereinafter Vroom).
Regarding claim 1, Vroom teaches a game controller (e.g., mobile device controller 500 in Fig. 5) comprising:
a first component comprising a user input device (e.g., a first controller module 505 and/or a second controller module 510); and
a second component comprising at least one magnet (e.g., an inductive charging array 585 with one or more orientation magnets/magnetics 590 in ¶ 98);
wherein:
one of the first and second components is movable with respect to the other of the first and second components between a first configuration and a second configuration (compare the open configuration in Fig. 5 and the partially closed or collapsed configuration of Fig. 6 and ¶ 99);
when in the first configuration, the user input device and the second component overlap (see Fig. 6 showing at least some overlap between the controller modules and the orientation magnets/magnetics); and
when in the second configuration, the first and second components are positioned to allow the user input device to be used to play a game on a mobile device magnetically attached with the at least one magnet (see Fig. 5 and Fig. 8).
Regarding claim 10, Vroom teaches a game controller comprising (e.g., mobile device controller 500 in Fig. 5):
a plurality of user input devices (e.g., a first controller module 505 and a second controller module 510); and
a magnetic connector movable between first and second positions (e.g., an inductive charging array 585 with one or more orientation magnets/magnetics 590 in ¶ 98);
wherein:
the game controller has a smaller footprint when the magnetic connector is in the first position than when the magnetic connector is in the second position (compare Fig. 5 and Fig. 6); and
when the magnetic connector is in the second position, the game controller is configured for use to play a game on a mobile device magnetically connected with the magnetic connector (see Fig. 5 and Fig. 8).
Regarding claim 19, Vroom teaches a game controller (e.g., mobile device controller 500 in Fig. 5) comprising:
a first component comprising a user input device (e.g., a first controller module 505 and/or a second controller module 510); and
a second component comprising at least one magnet (e.g., an inductive charging array 585 with one or more orientation magnets/magnetics 590 in ¶ 98);
wherein:
the first and second components are movable between a non-game-play position and a game-play position (compare the open configuration in Fig. 5 and the partially closed or collapsed configuration of Fig. 6 and ¶ 99);
the game controller has a smaller footprint in the non-game-play position than in the game-play position (compare Fig. 5 and Fig. 6);
when in the non-game-play position, the user input device and the second component overlap (see Fig. 6 showing at least some overlap between the controller modules and the orientation magnets/magnetics); and
when in the game-play position, the first and second components are positioned to allow the user input device to be used to play a game on a mobile device magnetically attached with the at least one magnet (see Fig. 5 and Fig. 8).
Regarding claims 2, 11, and 20, Vroom teaches wherein the second component is slideable with respect to the first component (e.g., by way of adjustable bridge structure 555 having guide rails 565; see at least ¶ 99).
Regarding claim 3, Vroom teaches further comprising an additional user input device, wherein the additional user input device is concealed from a top view of the game controller when the first and second components are in one of the first and second configurations (e.g., The first and second controller modules 505 and 510 can additionally or alternatively include menu, function, and backside paddle inputs in ¶ 94).
Regarding claim 4, Vroom teaches wherein the additional user input device is concealed from the top view of the game controller when the first and second components are in the second configuration and the mobile device is magnetically attached with the second component (e.g., The first and second controller modules 505 and 510 can additionally or alternatively include menu, function, and backside paddle inputs in ¶ 94).
Regarding claim 5, Vroom teaches wherein the second component and the mobile device have different lengths (see at least Fig. 8).
Regarding claim 6, Vroom teaches wherein when in the second configuration and the mobile device is magnetically attached with the at least one magnet, the mobile device is in physical contact with both the first and second components (see at least Fig. 8).
Regarding claim 7, Vroom teaches further comprising first and second handles (e.g., left-hand controller 505 and right-hand controller 510) integrated into the game controller, wherein the first and second handles are fixed with respect to each other (e.g., when in the second configuration, shown in at least Fig. 8, the mobile device prevents the bridge from sliding, and therefore the controller portions 505 and 510 are fixed with respect to one another).
Regarding claim 9, Vroom teaches wherein: the game controller lacks an overhang portion to contact a top surface of the mobile device; and the at least one magnet is configured to provide a level of magnetic retention to compensate for the lack of the overhanging portion (see Fig. 8 and ¶ 73, which explains that a magnetic connection allows the mobile device to connect to the controller without relying on a mechanical connection to hold the mobile device to the mobile device controller).
Regarding claim 12, Vroom teaches wherein at least one of the plurality of user input devices and the magnetic connector overlap when the magnetic connector is in the first position (see Fig. 6 showing at least some overlap between the controller modules and the orientation magnets/magnetics).
Regarding claim 13, Vroom teaches wherein the magnetic connector is movable between first and second positions in response to a user force (e.g., The elastic structure within the adjustable bridge structure 555 can allow the first and second controller modules 505 and 510 to be pulled apart in ¶ 95).
Regarding claim 16, Vroom teaches wherein: the plurality of user input devices comprises first and second sets of buttons on a back surface of the game controller; and the magnetic connector is positioned between the first and second sets of buttons (e.g., The first and second controller modules 505 and 510 can additionally or alternatively include menu, function, and backside paddle inputs in ¶ 94).
Regarding claim 17, Vroom teaches wherein one of the plurality of user input devices is concealed from a top view of the game controller when the magnetic connector is in one of the first and second positions (e.g., The first and second controller modules 505 and 510 can additionally or alternatively include menu, function, and backside paddle inputs in ¶ 94).
Regarding claim 18, Vroom teaches wherein the one of the plurality of user input devices is concealed from the top view of the game controller when the magnetic connector is in the second position and the mobile device is magnetically connected with the magnetic connector (e.g., The first and second controller modules 505 and 510 can additionally or alternatively include menu, function, and backside paddle inputs in ¶ 94).
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Vroom in view of US 2020/0044482 to Partovi et al. (hereinafter Partovi).
Regarding claim 8, Vroom teaches the invention substantially as described above, including a magnet within a magnetic connector. Vroom lacks in explicitly teaching that the magnet is configured to float within the magnetic connector. In a related disclosure, Partovi teaches a system for inductive wireless charging of one or more devices (abstract). Partovi teaches that the system may be used for mobile devices such as mobile phones (e.g., ¶ 103). Partovi further teaches that when the mobile device is placed on or adjacent to the charger or power supply, magnets attract and pull the two parts into alignment with the centers of the two coils or wires aligned (¶ 137). Partovi teaches that the coil or wires and the magnet in the charger may be mechanically attached to the body of the charger such that the coil can move to align itself appropriately with the mobile device when it is brought into close proximity to the charger such that an automatic alignment of coils or wire patterns can be achieved (¶ 138). Partovi illustrates the movement of such alignment magnets in Fig. 71, which is described as magnets placed at the center of a moving, floating charger and/or power supply coil in order to achieve alignment of the respective coils (¶¶ 84, 539). The effect is that the mobile device may be magnetically attached to the charger in a variety of locations relative to the surface of the charging device (see Fig. 71). It would have been obvious to one of ordinary skill in the art before the effective date to modify the system of Vroom to allow the charger having magnets therein to float relative to the outer surface, as taught or suggested by Partovi, in order to provide automatic alignment of the charging elements as is beneficially taught by Partovi.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Vroom in view of US 2022/0032179 to Khaira et al.
Regarding claim 14, Vroom teaches the invention substantially as described above, but lacks in explicitly teaching a user interacting with an actuator. It is noted that the specification states the actuator may be a latch (Spec. ¶ 70). In a related disclosure, Khaira teaches a commonly-owned invention with similar adjustable bridge structure (see at least Figs. 1-4). Moreover, Khaira teaches one or more latch mechanisms that hold the device in a retracted configuration or an extended configuration (¶¶ 41-43). Khaira teaches that the user exerts pressure upon the device to engage or disengage the latch (e.g., ¶ 42-43). It would have been obvious to one of ordinary skill in the art before the effective date to modify the system of Vroom to include the at least one latch (actuator) of Khaira in order to allow the device to automatically maintain an extended and/or retracted configuration until the user exerts pressure to change the configuration.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Vroom in view of US 9,636,578 to Ricky (hereinafter Ricky).
Regarding claim 15, Vroom teaches the invention substantially as described above, including wherein the magnetic connector is movable between first and second positions in response to user interaction, but lacks in explicitly teaching that the movement is in response to a user interacting with a virtual actuator displayed on the mobile device. In a related disclosure, Ricky teaches a golf club simulation apparatus, an input member to receive club selection data, and a motor driven bend variability assembly for selectively altering the feel of the shaft housing (abstract). Ricky teaches that the input member 100 includes a digital display 102 that may be a touch screen (see Fig. 14). Ricky teaches a bend linkage 81 of the length adjustable bend variability assembly 80′ includes a first end operatively coupled to the bend shaft motor 84′ and a second end coupled to the upper housing portion 20b and is configured to move the upper housing portion 20b between respective retracted and extended configuration (9:1-4). In this way, Ricky teaches or suggests moving portions of a video game controller between a retracted and extended configuration by way of an actuator motor in response to a user interacting with a virtual actuator displayed on a touch screen. It would have been obvious to one of ordinary skill in the art before the effective date to modify the system of Vroom to include the ability to move between a retracted and extended configuration by way of an actuator motor in response to a user interacting with a virtual actuator displayed on a touch screen, as taught or suggested by Ricky, in order to automatically adjust configurations of the game controller.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited. For instance, US 20190354183 to Swindells et al. teaches a virtual controller having an adjustable distance between each handle. Additionally, US 20180345134 to Schmitz et al. teaches an input controller with a motor actuator to adjust trigger characteristics.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715
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