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 .
Response to Amendment
The examiner acknowledges the preliminary amendment filed 6/23/25. Claims 1-19 are canceled and Claims 20-38 are newly added and pending.
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.
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Claims 20-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11-16 of U.S. Patent No. 12,746,463 in view of Yamada (JP 2000-123690 A). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matters of Claims 20-27 of the instant application No. 19/234400 as it relates to at least an input device comprising a housing including an opening; an operation member; and a contact portion positioned within the housing, the operation member including: a shaft having a clearance from a periphery of the opening and passing through the opening; and a protruding portion protruding from the shaft, wherein the shaft is configured to be tilted, and the protruding portion is configured such that when the shaft is tilted in a tilt direction in which the clearance decreases, a first part of the protruding portion in the tilt direction comes into contact with the contact portion, thereby limiting the tilt in the tilt direction, and a second part of the protruding portion on the opposite side of the tilt direction does not come into contact with the contact portion are encompassed within the subject matters as it relates to the input device of Claims 1 and 11-16 U.S. Patent No. 12,746,463.
However, Claims 1 and 11-16 U.S. Patent No. 12,746,463 fails to teach the subject matters of Claims 20-27 of the instant application No. 19/234400 as it relates to wherein the input device is configured to output a signal including information regarding the direction in which the operation member is tilted and information regarding an angle of the tilt of the operation member. However, an analogous art of Yamada teaches wherein the input device is configured to output a signal including information regarding the direction in which the operation member is tilted and information regarding an angle of the tilt of the operation member (¶ 19-22, 30, 38). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the subject matters of U.S. Patent No. 12,746,463 with the output signal means of Yamada because such a modification would have yielded predictable results, namely, a means of providing inputs to a computing/gaming device from at user. Such a modification providing an input means that is easy to operate, has good operability, and can be downsized (Yamada - ¶ 18).
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 20 of U.S. Patent No. 12,357,907 in view of Yamada (JP 2000-123690 A). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matters of Claim 20 of the instant application No. 19/234400 as it relates to at least an input device comprising a housing including an opening; an operation member; and a contact portion positioned within the housing, the operation member including: a shaft having a clearance from a periphery of the opening and passing through the opening; and a protruding portion protruding from the shaft, wherein the shaft is configured to be tilted, and the protruding portion is configured such that when the shaft is tilted in a tilt direction in which the clearance decreases, a first part of the protruding portion in the tilt direction comes into contact with the contact portion, thereby limiting the tilt in the tilt direction, and a second part of the protruding portion on the opposite side of the tilt direction does not come into contact with the contact portion are encompassed within the subject matters as it relates to the input device of Claim 20 U.S. Patent No. 12,357,907.
However, Claim 20 of U.S. Patent No. 12,357,907 fails to teach the subject matters of Claim 20 of the instant application No. 19/234400 as it relates to wherein the input device is configured to output a signal including information regarding the direction in which the operation member is tilted and information regarding an angle of the tilt of the operation member. However, an analogous art of Yamada teaches wherein the input device is configured to output a signal including information regarding the direction in which the operation member is tilted and information regarding an angle of the tilt of the operation member (¶ 19-22, 30, 38). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the subject matters of U.S. Patent No. 12,357,907 with the output signal means of Yamada because such a modification would have yielded predictable results, namely, a means of providing inputs to a computing/gaming device from at user. Such a modification providing an input means that is easy to operate, has good operability, and can be downsized (Yamada - ¶ 18).
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent No. 11,497,987 in view of Yamada (JP 2000-123690 A). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matters of Claim 20 of the instant application No. 19/234400 as it relates to at least an input device comprising a housing including an opening; an operation member; and a contact portion positioned within the housing, the operation member including: a shaft having a clearance from a periphery of the opening and passing through the opening; and a protruding portion protruding from the shaft, wherein the shaft is configured to be tilted, and the protruding portion is configured such that when the shaft is tilted in a tilt direction in which the clearance decreases, a first part of the protruding portion in the tilt direction comes into contact with the contact portion, thereby limiting the tilt in the tilt direction, and a second part of the protruding portion on the opposite side of the tilt direction does not come into contact with the contact portion are encompassed within the subject matters as it relates to the input device of Claim 1 U.S. Patent No. 11,497,987.
However, Claim 1 of U.S. Patent No. 11,497,987 fails to teach the subject matters of Claim 20 of the instant application No. 19/234400 as it relates to wherein the input device is configured to output a signal including information regarding the direction in which the operation member is tilted and information regarding an angle of the tilt of the operation member. However, an analogous art of Yamada teaches wherein the input device is configured to output a signal including information regarding the direction in which the operation member is tilted and information regarding an angle of the tilt of the operation member (¶ 19-22, 30, 38). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the subject matters of U.S. Patent No. 11,497,987 with the output signal means of Yamada because such a modification would have yielded predictable results, namely, a means of providing inputs to a computing/gaming device from at user. Such a modification providing an input means that is easy to operate, has good operability, and can be downsized (Yamada - ¶ 18).
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 37-38 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 37 contains the limitation “the contact portion… comprises a cushioning material, the contact portion being located on the cushioning material”; however, it is unclear in regards to how the contact portion can comprise the cushioning material and be located on the cushioning material e.g. how can the contact portion include the material and be located on the material.
Claim 38 inherits the deficiencies of Claim 37 due to dependency; therefore, is rejected for the same reasons noted above.
Appropriate correction is required.
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) 20-38 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada (JP 2000-123690 A)(please refer to English translation found at https://translationportal.epo.org/emtp/translate?ACTION=description-retrieval&COUNTRY=JP&ENGINE=google&FORMAT=docdb&KIND=A&LOCALE=en_EP&NUMBER=2000123690&OPS=ops.epo.org%2F3.2&SRCLANG=ja&TRGLANG=en&apikey=TSMqTfrVAvNtryGI8Qlfbozj8DnAGlqJ&PDF=vGcgfViHwGj2iP3zpTI8My7G9zs_VPndVzK8-n_ih0q6qksM9GP-ZWNrLZh6hvyUIguiAq_4D09IssZwfqUtyEN-e27B8Fm3M8Vv8vLsaLA and attached herein as a pdf).
Claim 20: Yamada discloses an input device (Fig. 5) comprising: a housing (outer case 7) including an opening (circular opening 40); an operation member including: a keytop configured to be operated by a user; a shaft extending from the keytop and through the opening, the shaft having a first clearance from a periphery of the opening (see below screenshot of Fig. 1);
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and a protruding portion (10) protruding from the shaft and having an edge region distal from the shaft; and a contact portion (actuator 5) fixed within the housing (¶ 31 – “push button switch means 3 is fixed on the circuit board 9 by soldering terminals …”, ¶ 33 – “the actuator 5 has a donut shape as a whole, and four ribs 21 are formed protruding along the shape of the actuator 5… the actuator 5 is formed with two case fixing holes 22 for positioning the actuator with respect to the inner case 6”, ¶ 36 – “Next, the inner case 6 is fixed to the outer case 7. Next, the actuator 5 is inserted into the actuator storage groove 30 of the inner case 6. At this time, the actuator 5 is positioned and fixed to the case 6 by aligning and engaging the case fixing hole 22 with the boss 32….push button switch means 3 are soldered to the conductive portion of the circuit board 9 to fix the circuit board 9 to the outer case 7”), wherein the shaft is configured to be tilted, and wherein the protruding portion is configured such that as the shaft is tilted in a tilt direction and the first clearance decreases, tilt of the shaft in the tilt direction is limited when a first part of the edge region of the protruding portion in the tilt direction contacts the contact portion, and a second part of the edge region of the protruding portion that is opposite the tilt direction does not contact the contact portion (see below screenshots of Figs. 1-2, ¶ 29-41, emphasis on ¶ 32-38).
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wherein the input device is configured to output a signal including information regarding the direction in which the operation member is tilted and information regarding an angle of the tilt of the operation member (¶ 19-22, 30, 38).
Claim 21: Yamada teaches wherein the protruding portion is configured such that when the first part of the edge region of the protruding portion contacts the contact portion, the first clearance between the shaft in the tilt direction and the periphery of the opening remains (Fig. 4, ¶ 29-41).
Claim 22: Yamada teaches wherein the operation member is configured to be tilted about a tilt point in the housing, and a longitudinal axis of the shaft passes through the tilt point (Figs. 1 and 4, ¶ 29-41).
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Claim 23: Yamada discloses wherein the contact portion (5) is a part of an inner surface of the housing or a part of a pedestal (inner case (6)) positioned within the housing (Figs 1-2, ¶ 29-41).
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Claim 24: Yamada discloses wherein the contact portion is a part of the pedestal, and when the first part of the edge region of the protruding portion contacts the part of the pedestal to limit tilt in the tilt direction, the second part of the edge region of the protruding portion does not contact the pedestal and does not contact the housing (Figs. 1-2 and 4, ¶ 29-41).
Claim 25: Yamada discloses wherein the contact portion has a ring shape (Fig. 2, ¶ 29-41).
Claim 26: Yamada teaches on an inner circumferential side of the contact portion, an inner wall extending in an outward direction of the housing (Figs. 1-2, ¶ 29-41).
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Claim 27: Yamada teaches wherein the protruding portion is configured such that as the shaft is tilted, there is a second clearance between the inner wall and the protruding portion (Figs. 1-2, 4, ¶ 29-41).
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Claim 28: Yamada teaches wherein the protruding portion is configured such that when the first part of the edge region of the protruding portion contacts the contact portion, the first clearance between the shaft in the tilt direction and the periphery of the opening remains (Fig. 4).
Claim 29: Yamada teaches wherein the operation member is configured to be tilted about a tilt point in the housing, and a longitudinal axis of the shaft passes through the tilt point (Figs. 1 and 4, ¶ 29-41).
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Claim 30: Yamada teaches wherein the operation member is configured to be tilted about a tilt point in the housing, and a longitudinal axis of the shaft passes through the tilt point (Figs. 1 and 4, ¶ 29-41).
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Claim 31: Yamada teaches wherein the protruding portion is configured such that when the protruding portion contacts the contact portion, a distance between the protruding portion and the inner wall in the tilt direction is greater than a distance between the shaft and the periphery of the opening (Fig. 4, ¶ 29-41).
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Claim 32: Yamada teaches wherein the protruding portion is configured such that when the first part of the edge region of the protruding portion contacts the contact portion, the first clearance between the shaft in the tilt direction and the periphery of the opening remains (Fig. 4, ¶ 29-41).
Claim 33: Yamada teaches wherein the operation member is configured to be tilted about a tilt point in the housing, and a longitudinal axis of the shaft passes through the tilt point (Figs. 1 and 4, ¶ 29-41).
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Claim 34: Yamada teaches wherein the operation member is configured to be tilted about a tilt point in the housing, and a longitudinal axis of the shaft passes through the tilt point (Figs. 1 and 4, ¶ 29-41).
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Claim 35: Yamada teaches wherein the shaft comprises a first end and a second end opposite the first end, the keytop being positioned at the first end, and the protruding portion protruding from the shaft between the first end and the second end (Figs. 1 and 4).
Claim 36: Yamada teaches wherein the protruding portion protrudes from the shaft along a curved path (Figs. 1 and 4).
Claim 37: Yamada teaches wherein the contact portion further comprises a cushioning material, the contact portion being located on the cushioning material (giving it’s broadest reasonable interpretation is any material that absorbs energy, wherein the contact portion of Yamada absorbs/limits movement of the operation member)(Figs. 1-4, ¶ 29-41, emphasis on Fig. 3, ¶ 33).
Claim 38: Yamada teaches wherein the contact portion consists of a single piece of material (Figs. 1-4, ¶ 29-41, emphasis on Fig. 3, ¶ 33).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Please see PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAMAR HARPER whose telephone number is (571)272-6177. The examiner can normally be reached 7:30am to 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached on (571) 270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRAMAR HARPER/Primary Examiner, Art Unit 3715
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