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 .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) or improperly label the following reference sign(s) mentioned in the description:
Element 101 in Figure 1 as referenced in [0014] of the specification.
Element 103 in Figure 1 points to the bottom of the assembly – separate from the cover 102; however, [0014] defines element 103 as the “enhanced friction surface”, which is meant to be “the surface of the cover 102”.
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. 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.
Furthermore, Figures 2, 3, and 5 are objected to because the drawings contain alphanumeric text and icon elements relating to the claimed features of the instant invention that appear blurry and pixelated. This further contributes to the indefiniteness of the claimed invention, as a person of ordinary skill in the art would not be able to ascertain the precise metes and bounds of the claims as they pertain to the drawings.
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because various syntactical/typographical errors (e.g., “provide enhances grip” and “strain injuries for user’s”) and referencing purported merits (e.g., “can further reduce repetitive strain injuries for user’s of controllers having a thumbstick.”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The title of the invention is not descriptive because the current title references a “method of producing” an ergonomic game controller extended thumbstick cover, yet none of the claims are directed to such a method. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: “An ergonomic game controller extended thumbstick cover”.
The disclosure is objected to because of the following informalities:
Claim 4 and [0019] of the instant application recite a cover using a material with Shore A hardness 45A, but [0019] also states the cover using a material with Shore A hardness in a range of 30A to 40A. This inserts inconsistency within the disclosure.
Appropriate correction is required.
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.
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 1-2 and 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bailey [US20060003840A1].
Regarding claim 1, Bailey discloses:
A cover assembly for a controller thumbstick (Bailey, [0008], “The present invention also provides a covering attachment for a game actuation device.”) comprising:
a base having a proximal end and a distal end (Bailey, [0007], “The game actuation device also includes a removable elastomeric cover body having a top layer and sides extending downward therefrom.”), wherein the proximal end is adapted to engage a thumbstick of a hand-held controller (Bailey, [0007], “The cover body also has an opening formed between the sides to receive the top portion of the joystick.”);
a cover disposed on the distal end of the base (Bailey, [0007], “The game actuation device further includes an elastomeric cover cap that is positioned over the top layer of the cover body.”);
wherein the cover has a hardness less than a hardness of the base (Bailey, [0007], “The cover cap has a second hardness that is less than the first hardness.”).
Regarding claim 2, Bailey discloses:
The cover assembly of claim 1,
wherein the base and the cover are separate components (Bailey, Fig 1, Cover cap 29, although on top of cover body 25, are distinctly different components as outlined in Fig 1.).
Regarding claim 4, Bailey discloses:
The cover assembly of claim 1,
wherein the cover has a hardness of about 45A (Bailey, [0016], “The second elastomeric material of cover cap 29 preferably has a Shore hardness in the range of 25 to 50 on the A scale. … cover cap 29 is made from Versaflex® CL40 with an A scale Shore hardness of 43.”).
Regarding claim 5, Bailey discloses:
The cover assembly of claim 1, further comprising:
a plurality of friction-modifying features disposed on a surface of the cover (Bailey, [0019], “The concave shape of upper surface 35 and the array of protrusions 37 formed on upper surface 35 advantageously provide a slip resistant surface for engagement by a finger or thumb of an operator using game actuation device 19 having joystick cover 11 attached thereto.”).
Regarding claim 6, Bailey discloses:
The cover assembly of claim 1,
wherein the base has a cavity matching a profile of the thumbstick (Bailey, [0007], “The cover body also has an opening formed between the sides to receive the top portion of the joystick.”).
Regarding claim 7, Bailey discloses:
The cover assembly of claim 1,
wherein the base circumferentially engages the thumbstick (Bailey, [0015], “Cover body 25 preferably includes a top portion with a plurality of sides extending downward therefrom for covering and surrounding the outer circumferences of top portion 15 of joystick 13.”).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Bailey and Slotta [US20050253810A1].
Regarding claim 3, Bailey discloses the limitations of claim 1 as cited above, such as a base (i.e., cover body) with a hardness different that the cover (i.e., cover cap), Bailey does not disclose the base that has a hardness of about 55A.
Slotta, however, discloses:
The cover assembly of claim 1,
wherein the base has a hardness of about 55A (Slotta, [0082], “In the preferred embodiment in which the first mold is the lower portion 402, the first material is a thermoplastic rubber material that will have a Shore A durometer of about 55 to about 65 when fully cured.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the cover body of Bailey from a material having a Shore A hardness of about 55, as taught by Slotta, because Slotta teaches that a harder region surrounding the recess assists in retaining the cover on the control stick by maintaining its form while permitting the contact surface to remain relatively soft (Slotta, [0072]) and because both Bailey and Slotta are directed to two-durometer elastomeric covers received over a control stick, such that applying Slotta’s known hardness selection to Bailey’s cover body would have yielded predictable results.
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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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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/Z.J.P./Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
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