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 .
Claim Objections
Applicant is advised that should claims 27-29 be found allowable, claims 37, 39, and 40 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof, respectively. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 18, 23, 26, 30, 32, and 35 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.
Claim 18 recites the limitation "the mechanism" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 23 and 35 recites, “a second hardware interface”; however, claims 23 and 33, and the claims at which claims 23 and 33 depend, do not recite “a first hardware interface”.
Claim 26 recites, “the midline of the bridge”; however, the closest antecedent is “a transverse midline [of the span]” – not a midline of the bridge.
Claim 30 recites the limitation "the first handle" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 32 recites the limitations "the bridge", “the first handle, and “the second handle". There is insufficient antecedent basis for these limitations in the claim.
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 16-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,194,374. Although the claims at issue are not identical, they are not patentably distinct from each other because the structure remains the same despite slightly modified terminology.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
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.
Claims 16-20, 27-31, and 37-40 are rejected under 35 U.S.C. 103 as being unpatentable over Lee [US20140357371A1] and Morganti [US5212359A].
Regarding claim 1-15, the Applicant elected to cancel the claims prior to the first action on the merits.
Regarding claim 16, Lee discloses:
A handheld game controller (Lee, [0008], “FIG. 1 is an assembled perspective view showing that a button structure is used in a game controller according to an embodiment of the present invention;”) comprising:
a handle (Lee, [0015], “The base frame 20 is substantially of board shape and horizontally fixed in the game controller 100”); and
a button coupled to the handle (Lee, [0005], “The button structure includes a button body assembled in a front face of the game controller”),
the button configured to accept touch inputs from a user (Lee, [0004], “A game controller is … a device used with games or entertainment systems to provide input to a video game”),
the button including a pivot rod at an end of the button and configured to engage a track slot of the handle (Lee, [0005], “The button body is pivoted to a front end of the base frame. A rear of the base frame defines an arc-shaped guide slot extending along a front-to-rear direction.”),
the pivot rod configured to rotate within the track slot and to translate within the track slot (Lee, [0005], “the sliding of the sliding part can drive the guide pillar to slide rearward and forward along the guide slot under the cooperation of the guide slot and the guide channel and further drive the rotating part to rotate”;),
the button further including an actuator at a first-span distance from the pivot rod (Morganti, col 4, lines 49-50, “shoulder 22, of pivot pin 8, in abutting contact with a surface 23 of micro-switch actuator 11”).
Lee does not disclose a pivot rod in conjunction with the track slot, although Lee does partially disclose this feature as cited above, or an actuator as detailed in claim 1 of the instant application.
Morganti, however, discloses:
the pivot rod configured to rotate within the track slot and to translate within the track slot (Morganti, col 4, lines 61-62, “as pivotal switch element 6 pivots and slides, within slidable slot 9”; Morganti, col 4, lines 66-68, “the three point contact guides the movement of pivot pin 8 and pivotal switch element 6, within slot 9, to prevent any cocking or jamming”),
the button further including an actuator at a first-span distance from the pivot rod (Morganti, col 4, lines 49-50, “shoulder 22, of pivot pin 8, in abutting contact with a surface 23 of micro-switch actuator 11”).
It would have been obvious to one of ordinary still in the art before the effective filing date of the claimed invention to apply Morganti’s pivot-and-slide coupling to Lee’s button to permit reliable actuation force since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Furthermore, the Examiner would like to note that Morganti is considered analogous art as Morganti’s disclosure is reasonably pertinent to the particular problem with which the Applicant was concerned – actuating an elongated member pressed anywhere along its span.
Regarding claim 17, Lee/Morganti discloses:
The handheld game controller of Claim 16, further comprising
a mechanism configured to bias the button in an undepressed condition (Lee, [0005], “The sliding part … abuts against the back of the button body under the elasticity of an elastic part which is flexibly disposed between the sliding part and the base frame.”; Morganti, col 4, line 65, “biased micro-switch actuator 11”).
Regarding claim 18, Lee/Morganti discloses:
The handheld game controller of Claim 16,
wherein the mechanism comprises a spring (Lee’s elastic part and Morganti’s biased micro-switch actuator.).
Regarding claim 19, Lee/Morganti discloses:
The handheld game controller of Claim 16,
wherein the actuator is coupled to the handle at an outer edge of the handle (Lee, [0014], “The button body 10 is assembled in a front face of the game controller 100”).
Regarding claim 20, Lee/Morganti discloses:
The handheld game controller of Claim 16,
wherein the handle comprises a user-accessible, hardware interface that is configured to accept touch inputs (Lee, The circuit board and buttons.).
Regarding claim 30, Lee/Morganti discloses:
The handheld game controller of Claim 27,
wherein the button is coupled to the handle at an outer edge of the first handle (Lee, See buttons and handles in Fig 1.).
Claims 21-26 and 32-36 are rejected under 35 U.S.C. 103 as being unpatentable over Lee and Morganti as applied to claims 16-20, 27-31, and 37-40 above, and further in view of Townley [US20170326447A1].
Regarding claim 21, Lee/Morganti discloses:
The handheld game controller of Claim 16,
wherein the handle is a first handle and the button is a first button (See citations of Lee above.), and
Lee/Morganti disclose the game controller as cited above, but Lee/Morganti does not disclose the bridge and mobile-device elements as claimed within the instant application.
Townley, however, discloses:
wherein the handheld game controller further comprises:
a bridge extending from a main body portion of the first handle (Townley, [0072], “Preferably, the input device 250 provides a pair of control modules 252. The pair of control modules 252, are adjacent to and confining the computing device 242, on at least two opposing sides of the plurality of sides 244”); and
a second handle (See citations of Lee above.),
the bridge extending from a main body portion of the second handle and coupling the second handle to the first handle (Townley, [0072], “Preferably, the input device 250 provides a pair of control modules 252. The pair of control modules 252, are adjacent to and confining the computing device 242, on at least two opposing sides of the plurality of sides 244”).
It would have been obvious to one of ordinary still in the art before the effective filing date of the claimed invention to apply the game controller system/method of Lee/Morganti with the mobile-device controller mechanism as taught by Townley since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Applying a known button mechanism to a known game controller housing yields no more than the predictable result of a functioning input on a mobile-device controller.
Regarding claim 22, the claim recites similar limitations to claim 16 with the exception of duplicative elements; however, the mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP 2144.04, Section VI, Part B is reproduced below for ease of reference:
“In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).”
Regarding claim 23, the claim recites similar limitations to claim 20 with the exception of duplicative elements. See the explanation regarding duplication of parts under claim 22 above for further details.
Regarding claim 24, Lee/Morganti/Townley discloses:
The handheld game controller of Claim 21, further comprising
a mobile device contacted and supported by the first handle and the second handle (Townley, Computing Device 242).
Regarding claim 25, Lee/Morganti/Townley discloses:
The handheld game controller of Claim 21,
wherein the bridge is in sliding engagement with the first handle and the second handle (Townley, [0092], “The pair of control modules (408, 410) are preferably configured such that the pair of control modules (408, 410) adaptively and snugly accommodate the width 414, of the computing device 406.”).
Regarding claim 26, Lee/Morganti/Townley discloses:
The handheld game controller of Claim 25,
wherein the bridge has a span extending away from the first handle (Townley, Illustrated in various figures: Figs. 5, 11, 14, 16-18, 25-26, etc.),
the span having a transverse midline (Townley, See figures listed directly above.),
the midline of the bridge being between the first handle and the second handle (Townley, See figures listed directly above.),
the bridge and the first handle being configured for the first handle to translate in a retraction direction toward the midline of the bridge and into a retracted configuration and also to translate in an extension direction away from the midline of the bridge into an extended configuration (Townley, See citations above.),
the bridge and the second handle being configured for the second handle to translate along the bridge in the retraction direction toward the midline of the bridge and into the retracted configuration and also to translate in the extension direction away from the midline of the bridge and into the extended configuration (Townley, See citations above.).
Regarding claims 27-29 and 31-40, the claims share similar limitations to claims 16-26. For citations on rejection, see the rejection of claims 16-26 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY JOSEPH POLLOCK whose telephone number is (703)756-5952. The examiner can normally be reached Monday-Friday 10:00am-8:00pm ET.
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/Z.J.P./Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
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