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 .
Claim Objections
Claims 1 and 16-17 are objected to because of the following informalities: “left are” should read, “left area.” Appropriate correction is required.
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 “outer shape of an operation surface of the second button and an outer shape of an operation surface of the fifth button are different from each other” 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.
Applicant’s specification specifically points out that the second and fifth buttons (ZL and ZR) are the same shape (see par. [0073] of applicant’s specification). Therefore, this conflicts with the claim language of claims 11 and 13 that states that they have an outer shape different from each other.
Similarly, the “outer shape of an operation shape of the first button and an outer shape of an operation surface of the fourth button are the same as each other” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Like claims 11 and 13, applicant’s specification has stated that symmetrical buttons that are not the same shape except along a mirrored axis are considered to be the “same shape” (see [0073] of applicant’s specification). The R and ZR buttons are both symmetrical to the L and ZL buttons, but in claims 11-13, applicant appears to change the interpretation of “same shape” to either mean exact copies of each other, or symmetrical being considered the same shape.
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 1-17 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 1 recites the limitation, “four third buttons located on left, right, top, and bottom.” This appears to be a sentence fragment and does not clearly convey the construction or layout of the third buttons, as there is no indication as to what the directions left, right, top, and bottom are in reference to or with. The third buttons could very well be positioned at any position on the controller and still be considered left, right, top, and bottom in relation to some other nonspecific generic reference point. With reference to the drawings, the examiner will assume that the buttons are laid out in an arrangement as illustrated in fig. 2, 2a, 2b, 2x, and 2y.
Claims 2-17 are dependent on claim 1 and inherit these deficiencies.
Claims 11-13 recite the limitations “different from each other” and “same as each other.” As noted in the drawings section above, as applicant has seemingly treated the interpretation of “same shape” to allow symmetrical shapes along an axis that are not literal one-to-one copies of each other to be considered the same shape, it lends uncertainty as to the true requirements for the shape of each button. The examiner will assume that either identically shaped buttons or mirrored shapes both could be considered the same shape.
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.
Claim(s) 1-4 and 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vortez (with reliance on Xbox Elite Wireless Controller Review - Closer Look).
Re claim 1, please refer to the following images:
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Vortez discloses a game controller including a main body, left grip extending at least downward from lower left in a front view of the main body, and a right grip extending at least downward from lower right in the front view of the main body, the game controller comprising:
a left stick, a first button and a second button (LB and LT, hereinafter referred to as shoulder buttons along with RB and RT) located at a left area of a front side of the main body, where a left thumb of a user’s left hand holding the left grip reaches; and
four third buttons located on left, right, top, and bottom (X, Y, A, and B, hereinafter referred to as the face buttons), a fourth button and a fifth button (RB and RT) located at a right area of the front side of the main body where a right thumb of a user’s fight hand holding the right grip reaches, wherein
the first button is located at the upper right of the left stick,
the second button is located at the lower right of the first button,
the fourth button is located at the upper left of one third button placed on the left side among the four third buttons,
the fifth button is located at the lower left of the fourth button,
an amount of protrusion of the second button from a front surface of the main body is smaller than an amount of protrusion of the first button from the front surface of the main body (see second of the three images, LT is not visible behind LB and therefore protrudes less than LB), and the amount of protrusion of the first button from the front surface of the main body is smaller than an amount of protrusion of the left stick from the front surface of the main body (see third image, where the left stick clearly protrudes more than the other buttons on the controller), and
an amount of protrusion of the fifth button from the front surface of the main body is smaller than an amount of protrusion of the fourth button from the front surface of the main body (see second of the three images, RT is not visible behind RB and therefore protrudes less than RB), and the amount of protrusion of the fourth button from the front surface of the main body is smaller than an amount of protrusion of each of the third buttons from the front surface of the main body (see second image, where the face buttons are closer to the user than the shoulder buttons, having the same relation as the corresponding elements in the drawings, with face buttons 2a, 2b, 2x, and 2y being closer to the user than buttons 6b and 7b in fig. 2 of the application).
Re claims 2-3, Vortez discloses the protrusion of the first button is smaller than the amounts of protrusion of the third buttons from the front surface of the main body (see the reasonings above regarding the face buttons and shoulder buttons).
Re claim 4, Vortez discloses the protrusions of the second and fifth buttons from the front surface of the main body being equal (see images wherein the shoulder buttons are mirrored and therefore of equal protrusion).
Re claim 11, Vortez discloses the outer shape of the operation surfaces of the second and fifth buttons are different (see second image in the rejection to claim 1, with LT and RT being differently shaped).
Re claim 12, Vortez discloses the outer shape of the operation surface of the first and fourth button are the same as each other (see second image in claim 1, with LB and RB being mirror images of each other and therefore being considered the same outer shape, matching the disclosure of the claimed invention as visible in fig. 6, 6a and 6b).
Re claim 13, see the rejection to claim 11.
Claim Rejections - 35 USC § 103
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 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(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vortez in view of PlayStation 3 (herein after PS3, with reliance on attached instruction manual https://dn760009.eu.archive.org/0/items/manualsbase-id-543568/543568.pdf).
Re claim 10, while Vortez may disclose buttons, Vortez is silent on the third buttons causing the game controller to output data causing the gaming device to perform a function predetermined in the game application and the second button is configured to cause the game controller to output first data causing a gaming device to perform a predetermined function whether or not a game application is being executed by the gaming device.
The PS3 teaches a controller with functionality such as buttons that have functionality whether or not a game application is being executed (p. 21, the PS button on the controller turns on the power for the system, and can also be used to turn the system off), as well as the face buttons performing in-game commands (p. 11, X and circle are used to confirm or cancel operations, respectively).
It would have been obvious to implement a button that has functionality independent of gameplay as taught by PS3 in order to provide universal and generic functionality for certain buttons for commonly accessed features such as system power, increasing the convenience and ease of use for the user.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vortez in view of SRK (with reliance on PCB for PS2 - Tech Talk - Shoryuken Forums Archive).
Re claims 14-15, Vortez does not explicitly disclose the operation surface of the fourth and fifth buttons are smaller than an operation surface of each of the third buttons. SRK teaches a PCB for a PS2 controller, wherein the operation surface for the shoulder buttons are soldered and therefore smaller than the operation surfaces of the face buttons, as illustrated below:
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It would have been obvious to implement features of the PCB design of the PS1 controller as disclosed by SRK in order to provide a solid, reliable connection for the shoulder buttons, while providing a larger, more easily serviceable area for the face buttons in order to provide serviceability and repairability for the more commonly used buttons on the controller.
Allowable Subject Matter
Claims 5-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: while NFC is not a new technology and controllers with NFC are found in the prior art, there is no reason or suggestion in the prior art to include NFC functionality coupled with the construction requirements and location in a game controller as required by claims 5-10. An inclusion of NFC with the requirements of the claims would be designed in hindsight and/or with impermissible hindsight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Y Kim whose telephone number is (571)270-3215. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached at (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN Y KIM/Primary Examiner, Art Unit 3715
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