Anascape, Ltd v. Microsoft Corp. et al

Filing 117

NOTICE by Microsoft Corp. DEFENDANT MICROSOFT CORPORATION'S NOTICE OF PTO ORDERS AND PATENT CLAIM REJECTIONS IN MICROSOFT'S REQUESTS FOR RE-EXAMINATION OF ANASCAPE PATENTS (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D)(Joncus, Stephen)

Anascape, Ltd v. Microsoft Corp. et al

Doc. 117 Att. 2

Case 9:06-cv-00158-RHC

Document 117

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EXHIBIT B

Dockets.Justia.com

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Case 9:06-cv-00158-RHC

Document 117
Control No.

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Patent Under Reexamination

Transmittal of Communication to
Third Party Requester Inter Partes Reexamination

95/000,221 Examiner

6906700
Art Unit

Joseph R. Pokrzvwa 3992

-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --

Enclosed is a copy of the latest communication from the United States Patent and Trademark Office

in the above-identified reexamination proceeding. 37 CFR 1.903.
Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication, the third party requester of the inter partes reexamination may once file written comments within a period of 30 days from the date of service of the patent owner's response. This 3D-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947. If an ex parte reexamination has been merged with the inter partes reexamination, no responsive submission by any ex parte third party requester is permitted.

All correspondence relating to this inter partes reexamination proceeding should be directed to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
communication enclosed with this transmittaL.

U.S. Patent and Trademark Offce
PTOL-2070 (5/04)

Paper No. 20070622

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Control No.

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Patent Under Reexamination

ORDER GRANnNG/DEN~NG
REQUEST FOR INTER PARTES REEXAMINA TION
~

95/000,221 Examiner
Joseph R. Pokrzywa

6906700
Art Unit

3992

-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --

The request for inter partes reexamination has been considered. Identification of the claims, the references relied on, and the rationale supporting the determination are attached.

Attachment(s):

D PTO-892

~ PTO/SB/08

DOther:

1. ~ The request for inter partes reexamination is GRANTED.

D An Office action is attached with this order.
~ An Office action will follow in due course.

2. D The request for inter partes reexamination is DENIED.
This decision is not appealable. 35 U.S.C. 312(c). Requester may seek review of a denial by petition to the Director of the USPTO within ONE MONTH from the mailing date hereof. 37 CFR 1.927. EXTENSIONS OF TIME ONLY UNDER 37 CFR 1.183. In due course, a refund under 37 CFR 1.26(c) will be made to requester.

All correspondence relating to this inter partes reexamination proceeding should be directed to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this
Order.

U.S. Patent and Trademark Office

Paper No. 20070622

PTOL-2063 (08/06)

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Application/Control Number: 95/000,221

Page 2

Art Unit: 3992

DECISION GRANTING INTER PARTES REEXAMINATION

Reexamination
1. A substantial new question of patentability (SNQ) affecting claims 1-33 of United States

Patent Number 6,906,700 to Armstrong (hereafter "the '700 Patent") is raised by the present

request for inter partes reexamination filed on 5/4/07 for the reasons indicated below.

2. An Offce action on merits does not accompany this order for inter partes reexamination.
An Offce action on merits wil be provided in due course.

3. Extensions of time under 37 CFR 1.13 6( a) wil not be permitted in inter partes

reexamination proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant"

and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(c)

requires that inter partes reexamination proceedings "wil be conducted with special dispatch"
(37 CFR 1.937). Patent owner extensions of

time in inter partes reexamination proceedings are
time are not available for third party requester
patent owner's response is set

provided for in 37 CFR 1.956. Extensions of

comments, because a comment period of30 days from service of

by statute. 35 US.C. 314(b)(3).

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Application/Control Number: 95/000,221

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Art Unit: 3992
Substantial New Question of Patentabilty

4. For "a substantial new question of

patentability" (SNQ) to be present, it is only necessary

that:

A. The prior art patents and or printed publications raise a substantial question of
patentabilty regarding at least one claim, i.e., the teaching of

the prior art patents and printed

publications is such that a reasonable examiner would consider the teaching to be important in deciding whether or not the claim is patentable; it is not necessary that the prior art establish a

prima facie case of unpatentability; and

B. The same question of patentability as to the claim has not been decided by the
Offce in a previous examination or pending reexamination of the patent or in a final holding of
invalidity by the Federal Courts in a decision on the merits involving the claim.

5. For any reexamination ordered on or after November 2,2002, reliance on previously

Cited/considered art, i.e., "old art," does not necessarily preclude the existence of a substantial
new question of patentability (SNQ) that is based exclusively on that old art. Rather,

determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific
inquiry done on a case-by-case basis. See MPEP 2642.

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Page 4

Application/Control Number: 95/000,221
Art Unit: 3992

Listing of Prior Art
6. In the request for reexamination, the Third Pary Requester alleges that the '700 Patent

claims 1-33 are anticipated or unpatentable in light of

the following references:

a. Goto et al. (European Patent Application Publication EP 0 867212, hereafter

"Goto");
b. Himoto et al., (European Patent Application Publication EP 0 835 676, hereafter
"Himoto")* ;
c. Bersheim (U.S. Patent Number 4,491,325, hereafter "Bersheim");
d. Chandler (U.S. Patent Number 4,246,452, hereafter "Chandler");

e. Furukawa (Japanese Patent Publication H05-87760, hereafter "Furukawa'760")*;

f. Kramer (U.S. Patent Number 5,164,697, hereafter "Kramer")*;

g. O'Mara et al. (U.S. Patent Number 5,510,812, hereafter "O'Mara")*;
h. Ledin (U.S. Patent Number 6,002,594, hereafter "Ledin");
1. "Sega Saturn 3D Control Pad Instruction Manual", Sega Enterprises, Ltd., 1996,

(hereafter "Sega 3D Control Pad Manual");
J. "PlayStation Instruction Manual SCPH-7000", Sony Computer Entertainment

Inc., Sony Publication No. 3-861-343-05(1), 1994-1998, (hereafter "PlayStation Manual");
k. Armstrong (U.S. Patent Number 5,565,891, hereafter "Armstrong'

891 ")**;

1. Armstrong (U.S. Patent Number 5,589,828, hereafter "Armstrong'

828")*

*.

* - The references of

Himoto, Furukawa'760, Kramer, and ü'Mara were previously cited
the application that became the '700 Patent, but were not relied on for

during the prosecution of

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Application/Control Number: 95/000,221

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Art Unit: 3992
any rejections of the claims. Thus, in light of

the discussion in the Request for Reexamination,

these references are being viewed in a new light or different way as compared to their use in
earlier concluded examination(s).
** - The references of Armstrong' 891 and Armstrong'828 are both listed

as being parent

applications to U.S. Application 08/677,378, now U.S. Patent Number 6,222,525 (hereafter "the Armstrong'525 patent"), whereby the Armstrong'525 patent is a continuation-in-part to the
Armstrong'891 reference, which is a continuation-in-part of the Armstrong'

828 reference.

However, in light of

the discussion in the Request for Reexamination, these references are being

viewed in a new light, and are being viewed as prior art, published over one year before the fiing
date of

the instant '700 Patent.

The remainder of the references listed above are newly cited by the Third Party Requester
and were not considered during the prosecution of

the application that became the '700 Patent.

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Art Unit: 3992

Requester's Position
7. The Third Party Requester asserts that the cited references raise SNQ's for claims 1-33 of

the '700 Patent in the following manner:
Issue #1.
Claims 19-21 and 26 of

the '700 Patent to be anticipated under 35 U.S.C.

1 02(b) by Goto;
Issue #2.
Claims 19-21 and 26 of

the '700 Patent to be unpatentable under 35

U.S.C.103(a) over Goto in view of Applicant's Admissions;
Issue #3.
Claims 1-15 and 27-31 of

the '700 Patent to be unpatentable under 35

U.S.C.103(a) over Goto in view of

Himoto;
Claims 1-15 and 27-31 of

Issue #4.

the '700 Patent to be unpatentable under 35
Bersheim;

U.S.C.103(a) over Goto in view of

Himoto, and further in view of

Issue #5.

Claims 1-13 and 27-31 of the' 700 Patent to be unpatentable under 35 Himoto, and further in view of Applicant's Admissions;
Claims 20-21 and 26 of

U.S.C.103(a) over Goto in view of

Issue #6.

the '700 Patent to be unpatentable under 35

U.S.C.103(a) over Goto in view of

Chandler;
Claims 14,22-25,27, and 31 of

Issue #7.

the '700 Patent to be unpatentable under
760;

35 U.S.c. 103(a) over Goto in view of

Furukawa'

Issue #8.

Claim 16 of the '700 Patent to be unpatentable under 35 U.S.C. 103(a)
Furukawa'

over Goto in view of

760, and further in view of Applicant's Admissions;

Issue #9.

Claims 14 and 22-27 ofthe '700 Patent to be unpatentable under 35
Kramer;

U.S.C. 103(a) over Goto in view of

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Art Unit: 3992
Issue #10.
over Goto in view of Claims 16-18 of

the '700 Patent to be unpatentable under 35 US.C. 103(a)

Kramer, and further in view of Applicant's Admissions;
Claims 12-13, 15,22-25,27-31 of

Issue # 11.

the '700 Patent to be unpatentable

under 35 U.S.C. l03(a) over Goto in view ofO'Mara;
Issue #12.
Claim 26 of

the '700 Patent to be unpatentable under 35 U.S.C. 103(a)

over Goto in view of Ledin;
Issue

#13.

Claims 22 and 27-31 of

the '700 Patent to be unpatentable under 35

U.S.C. 103(a) over Goto in view of

the Sega 3D Control Pad Manual;
Claims 19-21 and 26 of

Issue #14.
U.S.C. 103(a) over Goto in view of

the '700 Patent to be unpatentable under 35

the PlayStation Manual;
Claims 6-11,14, and 32-33 of

Issue #15.
U.S.C. 103(a) over Goto in view of

the '700 Patent to be unpatentable under 35
Furukawa'

Chandler and further in view of

760;

Issue #16.
35 US.C. 103(a) over Goto in view of

Claims i-II, 13-16, and 27-33 of

the '700 Patent to be unpatentable under
Himoto;

Chandler, and further in view of

Issue #17.

Claim 21 of

the '700 Patent to be unpatentable under 35 U.S.C. 103(a)

over Goto in view of Chandler, and further in view of Ledin;
Issue #18.
Claims 1-5 and 13 of

the '700 Patent to be unpatentable under 35 U.S.c.

i 03(a) over Goto in view of Chandler, and further in view of O'Mara;
Issue #19.
Claims 6-11, 14,21, and 32-33 of

the '700 Patent to be unpatentable under

35 U.S.C. i 03(a) over Goto in view of Chandler, and further in view of Kramer;
Issue #20.
over Goto in view of Claims 27-31 of

the '700 Patent to be unpatentable under 35 U.S.C. 103(a)

Chandler, and further in view of

the Sega 3D Control Pad Manual;

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Application/Control Number: 95/000,221
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Issue #21.
103(a) over Goto in view of Claims 17 and 18 of

Page 8

the '700 Patent to be unpatentable under 35 U.S.C.
Kramer, and further in view of

Chandler, further in view of

the Sega

3D Control Pad Manual;
Issue #22.
U.S.C. 1 03 Claims 1-11 and 27-31 of

the '700 Patent to be unpatentable under 35
Ledin;

(a) over Goto in view of

Himoto, and further in view of

Issue #23.
U.S.c. 103(a) over Goto in view of

Claims i -11 and 27-31 of the' 700 Patent to be unpatentable under 35
Himoto, and further in view of Kramer;
Claims 3 and 4 of

Issue #24.
103(a) over Goto in view of

the '700 Patent to be unpatentable under 35 U.S.C.
the PlayStation Manual;

Himoto, and further in view of

Issue #25.
U.S.C. 103(a) over Goto in view of

Claims 6-11,27, and 31 of

the '700 Patent to be unpatentable under 35
Kramer;

Ledin, and further in view of

Issue #26.
U.S.C. 103(a) over Goto in view of

Claims 6-11, 27, and 31 of the' 700 Patent to be unpatentable under 35
Ledin and further in view of Furukawa'

760;

Issue #27.

Claims 27-31 of

the '700 Patent to be unpatentable under 35 U.S.C. 103(a)

over Goto in view of Ledin, and further in view of

the Sega 3D Control Pad Manual;
the '700 Patent to be

Issue #28.

Claims 1-5, 12-13, 15,22-25, and 27-31 of

unpatentable under 35 U.S.C. 103(a) over Goto in view ofO'Mara, and further in view of
Kramer;
Issue #29.
Claims 1-5 and 13 of

the '700 Patent to be unpatentable under 35 US.C.
Kramer, and further in view of

103(a) over Goto in view ofO'Mara, further in view of

Chandler;

Issue #30.
over Goto in view of

Claims 28-31 of

the '700 Patent to be unpatentable under 35 US.c. 103(a)
Himoto;

the Sega 3D Control Pad Manual, and further in view of

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Application/Control Number: 95/000,221 Art Unit: 3992
Issue #31.
Claims 6-11,14,16,19-25 and 32-33 of

Page 9

the '700 Patent to be unpatentable

under 35 U.S.C. 103(a) over Armstrong'

891 in view of Applicant's Admissions;

Issue #32.

Claims 16, 19-20,22-25, and 32-33 of

the '700 Patent to be unpatentable
828;

under 35 U.S.C. 103(a) over Armstrong'

891 in view of Armstrong'

Issue #33.
over Armstrong'

Claim 21 of

the '700 Patent to be unpatentable under 35 U.S.c. lO3(a)
828, and further in view of Applicant's Admissions;
the '700 Patent to be unpatentable under 35 U.S.C. 103(a)

891 in view of Armstrong'

Issue #34.
over Armstrong'

Claims 9-11 of

891 in view of

Chandler, and further in view of Applicant's Admissions;

Issue #35.
over Armstrong'

Claim 14 of

the '700 Patent to be unpatentable under 35 US.C. lO3(a)
Furukawa'

891 in view of

760;

Issue #36.

Claims 17 and 18 of

the '700 Patent to be unpatentable under 35 V.S.C.
Kramer, and further in view of Applicant's Admissions;
the '700 Patent to be unpatentable under 35

103(a) over Armstrong'891 in view of

Issue #37.
US.c. lO3(a) over Armstrong'

Claims 1-5 and 12-18 of

891 in view ofO'Mara, and further in view of Applicant's

Admissions;
Issue #38.
Claims 9-11 and 21 of

the '700 Patent to be unpatentable under 35 V.S.C.
828, and further in view of

103(a) over Armstrong'891 in view of Armstrong'

Chandler;

Issue #39.

Claims 9-11,17-18,21-27, and 32-33 of

the '700 Patent to be

unpatentable under 35 U.S.C. 103(a) over Armstrong'891 in view of Armstrong'

828, and further

in view of Kramer;

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Application/Control Number: 95/000,221
Art Unit: 3992
Issue #40.
Claims 12-13, 15-16,22-25, and 32-33 of

Page 10

the '700 Patent to be
891 in view of Armstrong'

unpatentable under 35 U.S.C. 103(a) over Armstrong'

828, and further

in view of O'Mara;
Issue #41.

Claims 9-11 and 21 of the '700 Patent to be unpatentable under 35 US.c.
828, and further in view of

103(a) over Armstrong'891 in view of Armstrong'

Ledin;

Issue #42.

Claims 16,22-25, and 32-33 of

the '700 Patent to be unpatentable under

35 U.S.c. 103(a) over Armstrong'891 in view of Armstrong'

828, and further in view of

Furukawa'

760;
Issue #43.

Claims 9-10 of the '700 Patent to be unpatentable under 35 U.S.C. 103(a)
i in view of Chandler, and further in view of

over Armstrong'

89

Himoto;

Issue #44.

Claim 5 of

the '700 Patent to be unpatentable under 35 D.S.C. 103(a) over

Armstrong'891 in view ofO'Mara, and further in view of

Chandler;

Issue #45.

Claim 5 of

the '700 Patent to be unpatentable under 35 D.S.C. 103(a) over
Ledin;

Armstrong'891 in view ofO'Mara, and further in view of

Issue #46.

Claims I-II of

the '700 Patent to be unpatentable under 35 US.C. 103(a)
Chandler, and further in view

over Armstrong'891 in view of Armstrong'828, further in view of

ofO'Mara;
Issue #47.
over Armstrong' 89 Claims 1-11 of

the '700 Patent to be unpatentable under 35 D.S.C. 103(a)
828, further in view of

I in view of Armstrong'

Ledin, and further in view of

O'Mara;

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Application/Control Number: 95/000,221 Art Unit: 3992
Issue #48.
35 U.S.c. 103(a) over Armstrong' Claims 1-13, 15-18, and 28-33 of

Page 11

the '700 Patent to be unpatentable under
828, further in view of

891 in view of Armstrong'

Kramer, and

further in view of O'Mara;
Issue #49.
over Armstrong' Claims 9-11 of

the '700 Patent to be unpatentable under 35 U.S.C. 103(a)
828, further in view of Furukawa'

891 in view of Armstrong'

760, and further in

view of Chandler;
Issue #50.
over Armstrong' Claims 9-11 of

the '700 Patent to be unpatentable under 35 US.c. 103(a)
828, further in view of Furukawa'

891 in view of Armstrong'

760, and further in

view of Ledin;
Issue #51.
US.C. 103(a) over Armstrong' Claims 9-11 and 17-18 of

the '700 Patent to be unpatentable under 35
828, further in view of Furukawa'

891 in view of Armstrong'

760,

and further in view of Kramer;
Issue #52.
Claims 1,3,6, and 8-10 of

the '700 Patent to be unpatentable under 35
Himoto, further in view of

U.S.C. 103(a) over Armstrong'891 in view of

Chandler, and further in

view ofO'Mara;
Issue #53.
U.S.C. 103(a) over Armstrong' Claims 1,3,6, and 8-10 of

the '700 Patent to be unpatentable under 35
Himoto, further in view of

891 in view of

Ledin, and further in

view of O'Mara;
Issue #54.
Claims 1,3,6, and 8-10 of

the '700 Patent to be unpatentable under 35

U.S.C. 103(a) over Armstrong'891 in view of

Himoto, further in view of Kramer, and further in

view ofO'Mara.

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Application/Control Number: 95/000,221
Art Unit: 3992
Prosecution History of

Page 12

the '700 Patent

8. The '700 Patent issued from an application with the serial number 09/715,532, fied Nov.

16,2000. Said application was a continuation of

application No. 08/677,378, fied on Jul. 5,

1996, now Patent Number 6,222,525, which is a continuation-in-part of application Number
08/393,459, fied on Feb. 23, 1995, now Patent Number 5,565,891, which is a continuation-in-

part of application Number 07/847,619, fied on Mar. 5, 1992, now Patent Number 5,589,828.

9. With this, the examiner notes that it would appear that the effective filing date for the
'700 Patent would be Jul. 5, l996, being the filing date of

the parent continuation, now Patent

Number 6,222,525 (hereafter "Armstrong' 525"), with portions even having an effective fiing
date of Feb. 23,1995 and Mar. 5,1992, being the filing dates of

the continuation-in-parts, now

Patent Number 5,565,891 and 5,589,828, respectively. However, as noted by the Third Party
Requester in the Request for Reexamination on pages 3-13, numerous alterations and additions
appear in the application that matured into the '700 Patent from the parent application of

the

Armstrong'525 patent, therein adding new matter and breaking the chain of continuity.

10. First, as discussed on pages 9-11 of the Request for Reexamination, which is hereby

incorporated by reference, the Third Party Requester points out differences in the Armstrong'525
patent and the instant '700 Patent. Particularly, in multiple sections, the phrase

"...a 6 DOF

image controller, which includes a single input member..." was changed to read"... a 3D image

controller, which includes at least one input member. .." During the prosecution of the' 700

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Page 13

Patent, the Applicant argued in remarks dated 10/25/02 that the alteration ofthe term "6 DOF"
so as to read "3D" does not constitute new matter, as copied below: In the current specification at numerous locations the language "3D" and "three-dimensional" have been used in substitution for "6DOF" and "six degrees of freedom" as originally used in the application issued as patent 6,222,525 from lang(ua)ge does which the current specification is continued. This substitution of not constitute new matter, but has been made to allow the reader easier
understanding ofthe subject matter. Any single three-dimensional software object

moving, for example in an electronic game, is moving in six degrees of freedom. This "SDOF" and "six degrees of freedom" lang( ua )ge is not as commonly used now as when the' 525 patent was fied and the same equivalent product or device which was once so called is now commonly called a 3D or three-dimensional controller.

11. However, the Applicant discussed nothing about the difference of "a single input

member", as stated in the Armstrong'525 patent, as opposed to the '700 Patent application's "at
least one input member", which broadens the possibility of

having multiple input members. In

the instant case, the '700 Patent is not seen to have the same disclosure as that of

the

Armstrong'525 patent, and the phrase of

"at least one input member" can be considered to

constitute new matter.

12. In this regard, it is noted that MPEP 201.11(R-5), section I, with the heading "Disclosure

Requirement", having the sub-section B, with the heading "B. Claiming the Benefit of
Nonprovisional Applications", states in part that:

The disclosure of a continuation application must be the same as the disclosure of the prior-fied application. See MPEP § 201.07. The disclosure of
a divisional application must be the same as the disclosure of

the prior-filed

application, or include at least that portion of the disclosure of the prior-fied application that is germane to the invention claimed in the divisional application. See MPEP § 201.06. The disclosure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the

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Art Unit: 3992
prior-fied application. A continuation-in-part application may include matter

not disclosed in the prior-fied application. See MPEP § 201.08. Only the claims the continuation-in-part application that are disclosed in the manner provided of by the first paragraph of 35 U.S.C. 112 in the prior-filed application are entitled to the prior-fied application. Ifthere is a continuous the benefit of the filing date of chain of copending nonprovisional applications, each copending application must the later-fied application in the manner disclose the claimed invention of provided by the first paragraph of 35 U.S.C. 112, in order for the later-filed the earliest filing date. (Emphasis application to be entitled to the benefit of
added) .

13. Continuing, as further discussed by the Third Party Requester in the Request for

Reexamination, Fig. 21 of

the '700 Patent includes the notation of

"Tactile Feedback Means,

e.g., Motor, Shaft and Weight", which does not appear in the Armstrong'525 patent.
Additionally, in column 21, lines 42-44 of

the '700 Patent, the specification includes a

description, which is not found in the Armstrong'525 patent, which describes a motor with shaft
and weight mounted to offset the shaft as an example of an active tactile feedback means.
Specifically, in column 5, lines i 1-29, the '700 Patent states:
Another object of the invention is to provide a 3D controller which is structured in such a manner as to allow the controller to be made with a relatively low profile input member, which offers many advantages in packaging for sale, operation in various embodiments and environments (such as a low profie 3D handle integrated into a keyboard so that other surrounding keys can stil be easily accessed) and functions of the device such as stil allowing room for active tactile feedback means (electric motor, shaft and weight) within a stil small low handle shape as indicated in the attached Fig. 21 in broken lines. "tactile feedback means" in reference to the active type as herein used can be an equivalent to or that which is detailed in the incorporated U.S. Patent 5,589,828 which is shown and described therein basically as a motor with shaft and weight on the shaft, the shaft being offset so that when rotated, vibration occurs which can be felt by the

hand(s) operating the controller.

14. By comparison, the Armstrong' 525 patent only states in column 8, lines 25-34:

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Another object of the invention is to provide a 6 DOF controller which is structured in such a manner as to allow the controller to be made with a relatively low profie input member, which offers many advantages in packaging for sale, operation in various embodiments and environments (such as a low profie 6 DOF handle integrated into a keyboard so that other surrounding keys can stil be easily accessed) and function of the device (such as stil allowing room for active tactile feedback means within a stil small low handle shape).

15. Thus, the specification of

the Armstrong'525 patent describes ofleaving room in the

handle for the placement of active tactile means, but does not specifically describe using a motor

with a shaft and weight on the shaft for the tactile feedback means. Further, the Armstrong'525
patent does not specifically describe using a motor with a shaft and weight, with the shaft being offset so that when rotated, vibration occurs which can be felt by the hand(s) operating the

controller. The '700 Patent incorporates by reference the active tactile feedback means described
in U.S. Patent 5,589,828, but this is not incorporated by reference in the Armstrong'525 patent.
Thus, the '700 Patent adds new matter into the Armstrong'

525 patent, as these features were not

expressly described in the Armstrong'525 patent.

16. Further, it is noted that the application that matured into the '700 Patent was originally

fied on 11/1612000 with the disclosure stating that the application was a "continuation-in-part",
whereby the first paragraph read:

pending U.S. Non-provisional patent which the positive teachings and disclosures are herein incorporated by reference and the benefit of the fiing date
This application is a continuation-in-par of application Serial Number 08/677,378 fied July 5,1996 of claimed. ... U.S. Application 08/677,378 was fied during the pendency of application 08/847,619 fied March 5,1992 and also makes claim to the benefit of

U.S.

the fiing date of the application 08/847,619, now U.S. Patent 5,589,828. This application is also a continuation-in-part of U.S. patent application serial number 08/847,619, fied March 5, 1992, now U.S. Patent 5,589,828, of which the positive teachings and disclosures are herein incorporated by reference. ... This application also is a

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continuation-in-part of and incorporates herein by reference U.S. patent application serial
number 08/393,459, fied February 23, i 995, now U.S. Patent 5,565,891, which is a
continuation-in-part of

U.S. patent application serial number 08/847,619 now U.S. Patent

5,589,828. ...

17. Subsequently, in

an amendment dated 10/25/02, the first paragraph was amended and

replaced by the following:

This application is a continuation of U.S. Patent Application Serial No.
08/677,378 fied on July 5, 19916, now U.S. Patent 6,222,525. U.S. Patent No.

U.S. Patent Application Serial No. 08/393,459 fied on Feb. 23, 1995, now U.S. Patent 5,565,891. U.S. Patent No. 6,222,525 is also a continuation-in-part of U.S. Patent Application Serial No. 07/847,619 filed on March 5,
6,222,525 is a continuation-in-part of

1992, now U.S. Patent 5,589,828....

18. Further, it is noted, that during the prosecution history of the application that matured into

the '700 Patent, the issue if

priority was addressed in an Office action dated 5/4/04, whereby the

examiner at the time pointed out that:

Adding at least a portion "the sensors including spaced components generally preventing false activation thereof through vibration" and "motor with shaft and
offset weight mounted to shaft" to page 3, lines 1-20 of presented in the prior application. It constitutes a continuation-in-part of

the specification is not

the prior application, not continuation as applicant amended on amendment fied on October 25, 2002.

19. In response to this action, the applicant amended the claims, removing the limitation of

"the unidirectional sensors including spacing preventing false activation by the vibration", and
argued that the motor with an offset weight is shown in Fig. 21 of the parent application that

became the Armstrong'525 patent. Particularly, in the remarks filed with the amendment dated
6/14/04, the Applicant stated:

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Claims 40, 42, 45, 49-51,53,69, 75 and 77 rejection under 35 USC 112 should all be held allowable with the acceptance that this application is a continuation of application 08/677,378 and that a motor with an offset weight connected to the motor are in the instant specification as well as shown in Fig. 21 in application 08/677,378. Application 08/677,378 is continued from application 07/847,619 by the present Inventor now U.S. Patent 5,589,828 wherein figures 1,2, 6 and 7 show a motor and offset weight drawn almost identically to figure 21 of the '378 application and described expressly and clearly in the '619 application
see column 9 lines 22-24 and column 12 lines 24-26.

The issue of continuation verses continuation-in-part regarding the motor and offset weight language in the claims has already been considered in depth by Primary Examiner Jeffery Brier during the examination of Application No. 09/721,090 now US Patent No. 6,310,606. Primary Examiner Brier found that the motor and offset weight was in fact in the '378 application and was not new matter. Therefore Examiner Brier correctly issued the '606 Patent as a "Continuation of application No. 08/677,378". The Examiner is encouraged to
review Examiner Brier's decision.

20. However, the Examiner notes that although Figure 21 of

the Armstrong'525 patent shows

a dashed outline, the description explicitly states in col. 23, lines 39-49 that "Such a device stil
has all the benefits of a pure mechanically resolved device and with two planer execution

additional benefits are realized, such as: the capability of exceptionally low profie design for
integration into computer keyboards and hand held remote controllers, ready integration of finger
operated buttons on the handle for operating sensors incorporated into the sensor sheet, space to
place active tactile feedback means in a still handle, etc." Thus, Fig. 21 of

the Armstrong'525

patent is seen to simply show space to place "active tactile feedback means". However, nowhere
does the Armstrong'525 patent describe this embodiment having the function of

"active tactile

feedback means" that would be detectable by a user, and nowhere in the Armstrong'525 patent is there a description of any active tactile feedback vibration being provided by a "motor with a
shaft and weight on the shaft, the shaft being offset so that when rotated, vibration occurs which

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can be felt by the hand(s) operating the controller", as read in the '700 Patent in column 5, lines
11-29.

21. Furthermore, the Armstrong'525 patent discloses using resilient "tactile" return-to-center

parts 226 as rubber dome cap type activators. Also, the Armstrong'525 patent states that the
rubber dome cap structures that are shown as RTCs 226 in Fig. 13, can be "metallic dome cap

structures (which give an exceptionally strong clear feedback sensation)..." Continuing, as seen
in Fig. 40, and read in column 29, lines 5-26, the Armstrong'

525 patent states:

Also I believe it is novel to use a metallic "snap-through" resilient dome cap 632 with for its excellent tactile turn-on feel properties..., where metallic upper membrane layer 620 and is shown held in dome cap 632 resides on top of place by silicon adhesive 636adhering dome cap 632 to any generic actuator 634.. .. Vibration lines 640 indicate an energetic vibration emanating outward either through support 630 or actuator 634 as a mechanical vibration transmitted through the connected parts to the user's hand, or as air vibrations perceived by the user's ear, and indicating the "snap-through" turn-on/off sensation of resilient dome cap 632 as it impinges upon and activates the sensor. With twelve possible singular input operations, and a very large number of combined input operations
the user perceivable tactile sensation indicating sensor activation is of

high value

to the operator of the device.

22. The examiner notes that this can be interpreted as being "active tactile feedback means
that would be detectable by a user". Thus, the Armstrong'525 patent describes active tactile
feedback means, being other than a motor, shaft, and offset weight. With this, it is clear that the
'700 Patent adds new matter to the specification that became the Armstrong'525 patent.

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23. As additionally noted in MPEP 201.11 (R-5), section I, with the heading "Disclosure

Requirement", having the sub-section B, with the heading "B. Claiming the Benefit of
Nonprovisional Applications", which states:

A claim in the later-fied application is not entitled to the benefit of the fiing date of the prior-fied application if the disclosure of the prior-fied application does not enable one skilled in the art to "use" the claimed invention. See In re Hafner, 410 F.2d 1403,1406,161 USPQ 783, 786 (CCPA
1969) ("(T)o be entitled to the benefits provided by (35 U.S.C. 120), the

invention disclosed in the "previously fied" application must be described therein in such a manner as to satisfy all the requirements of the first paragraph of (35 U.S.C.) 112, including that which requires the description to be suffcient to
enable one skiled in the art to use the (invention)."). Where the prior application

(a nonprovisional application) is found to be fatally defective because of insuffcient disclosure to support allowable claims, a later-fied application filed as a "continuation-in-part" of the first application to supply the deficiency is not entitled to the benefit of the filing date of the first application. Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 587, 83 USPQ 277, 281 (2d Cir. 1949) and cases cited therein. (Emphasis added).

24. With this, the disclosure of

the '700 Patent is seen to be not the same as the

Armstrong'525 patent. Further, it is seen that the application that matured into the '700 Patent
includes new matter from that of the Armstrong' 525 patent, as claimed features of

the '700

Patent, which require a motor and offset weight that provides tactile feedback vibration (see, for
instance, claims 2, 4, 7,11,12,13,15,25,31, and 33 of

the instant '700 Patent), are not

expressly or adequately described in the Armstrong'

525 patent, so as to enable one skiled in the

art to use the claimed invention. Therefore, the '700 Patent is not seen to be entitled to the
priority date of the Armstrong'

525 patent. Thus, because the '700 Patent includes new matter

based on the above analysis regarding the disclosure of the parent application of which the '700
Patent claims 35 U.S.C. 120 benefit, the inventions of claims 1-33 of

the '700 Patent have only a

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critical date for purposes of prior art patents and printed publications of

Page 20

Nov. 16, 2000, being the

filing date of

the application that matured into the '700 Patent.

Discussion of Issues that Raise an SNQ
25. It is agreed that Issues #1,3,4,6-7,9, 11-30,32,35, and 38-54 raise a SNQ regarding
the '700 Patent.

claims 1-33 of

26. It is not agreed that Issues #2, 5, 8, 10, 31, 33-34, and 36-37 raise a SNQ regarding

claims 1-33 ofthe '700 Patent.

27. The proposed substantial new questions (SNQ's) of

patentability indicated in the Request

for Reexamination by the Third Party Requester are based on numerous variations using two

primary references, being either the primary reference of Goto (Issues #1-30) or the primary
reference of the Armstrong' 891 patent (Issues #31-54). The Goto reference was published on
4/23/1998, being after the fiing date of

the Armstrong'525 patent (7/5/1996), but being before

the filing date of

the application that became the '700 Patent (11/16/2000), thus being an

intervening publication. The Armstrong' 891 patent was published on 10/15/1996, being over
one year before the filing date of

the '700 Patent. However, as discussed above, because claimed

features of

the '700 Patent (being the motor and offset weight that provide vibrations for an
525

active tactile feedback means) are not expressly or adequately described in the Armstrong'

patent, so as to enable one skiled in the art to use the invention of claims 2, 4, 7,11,12, 13, 15,

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Art Unit: 3992 25, 31, and 33 of the' 700 Patent, the effective date utilized for the purpose of prior art patents
and printed publications is that of Nov. 16,2000, being the filing date of

the '700 Patent.

28. In this regard, MPEP 2617 states, in part:

The statement applying the prior art may, where appropriate, point out that claims in the patent for which reexamination is requested are entitled only to the fiing date of that patent and are not supported by an earlier foreign or United States patent application whose filing date is claimed. For example, even where a patent is a continuing the claims could be the some of application under 35 U.S.c. 120, the effective date of fiing date of the child application which resulted in the patent, because those claims were not supported in the parent application. Therefore, any intervening patents or printed publications would be available as prior art. See In re Ruscetta, 255 F.2d 687, 118 USPQ
101 (CCPA 1958), In re van Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972).

See also MPEP § 201.11.

29. Therefore, with respect to Issue #1, the request indicates that the Third Party Requester

considers claims 19-21 and 26 as being anticipated by the reference of Goto. It is agreed that the

consideration of Goto raises a substantial new question of patentabilty as to independent claims
19 and 26. Request page 88, line 22 through page 90, line 6, and the claim chart on pages 69-76
of Appendix A, noted as Elements 114-119, and 124-128, are hereby incorporated by reference from the request for reexamination for their explanation of the teachings provided in Goto that
was not present in the prosecution of

the application which became the '700 Patent. Further,

there is a substantial likelihood that a reasonable examiner would consider these teachings

important in deciding whether or not the claims are patentable. Accordingly, Goto raises a
substantial new question of patentability as to claims 19-21 and 26, which question has not been
decided in a previous examination of

the '700 Patent.

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With respect to Issues #3 and 4, the request indicates that the Third Party Requester

considers claims 1-15 and 27-31 as being unpatentable over Goto in view of Himoto, and also as

being unpatentable over Goto in view of Himoto, and further in view of Bersheim. It is agreed
that the consideration of Goto in view of Himoto, as well as the consideration of Goto in view of
Himoto, and further in view of Bersheim raises a substantial new question of patentability as to

independent claims 1,3,5,6,9, and 12-15. Request page 98, line 7 through page 118, line 18,
and the claim chart on pages 1-58 and 77-80 of Appendix A, noted as Elements 1-92, and 129133, are hereby incorporated by reference from the request for reexamination for their

explanation of the teachings provided in Goto in view of Himoto that were not present in the
prosecution of

the application which became the '700 Patent. Further, there is a substantial

likelihood that a reasonable examiner would consider these teachings important in deciding

whether or not the claims are patentable. Accordingly, Goto in view of Himoto raises a
substantial new question of patentability as to claims 1-15 and 27-31, which question has not
been decided in a previous examination of

the '700 Patent.

With respect to Issue #6, the request indicates that the Third Party Requester considers

claims 20-21 and 26 as being unpatentable over Goto in view of Chandler. It is agreed that the
consideration of Goto in view of Chandler raises a substantial new question of patentability as to
claims 20-21 and 26. Request page 128, line 7 through page 131, line 4, and the claim chart on

pages 73-77 of Appendix A, noted as Elements 118-119, and 124-128, are hereby incorporated by reference from the request for reexamination for their explanation of the teachings provided in
Goto in view of Chandler that were not present in the prosecution of the application which

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became the '700 Patent. Further, there is a substantial likelihood that a reasonable examiner
would consider these teachings important in deciding whether or not the claims are patentable.

Accordingly, Ooto in view of Chandler raises a substantial new question of patentability as to

claims 20-21 and 26, which question has not been decided in a previous examination ofthe '700
Patent.

With respect to Issue #7, the request indicates that the Third Party Requester considers
claims 14,22-25,27, and 31 as being unpatentable over Ooto in view of Furukawa'

760. It is

agreed that the consideration ofOoto in view of

Furukawa'

760 raises a substantial new question

of

patentability as to claims 14,22-25,27, and 31. Request page 131, line 5 through page 134,

line 14, and the claim chart on pages 49-55,74-75,77-78, and 80 of Appendix A, noted as
Elements 75-83,120-123, 129, and 133, are hereby incorporated by reference from the request
for reexamination for their explanation of the teachings provided in Ooto in view of
Furukawa'760 that were not present in the prosecution of

the application which became the '700

Patent. Further, there is a substantial likelihood that a reasonable examiner would consider these

teachings important in deciding whether or not the claims are patentable. Accordingly, Ooto in
view of Furukawa'

760 raises a substantial new question ofpatentabilIty as to claims 14,22-25,
the '700 Patent.

27, and 31, which question has not been decided in a previous examination of

With respect to Issue #9, the request indicates that the Third Party Requester considers
claims 14 and 22-27 as being unpatentable over Ooto in view of

Kramer. It is agreed that the

consideration of Ooto in view of Kramer raises a substantial new question of patentability as to

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claims 14 and 22-27. Request page 136, line 20 through page 140, line 11, and the claim chart

on pages 49-55, and 74-78 of Appendix A, noted as Elements 75-83, and 120-129, are hereby
incorporated by reference from the request for reexamination for their explanation of

the

teachings provided in Goto in view of Kramer that were not present in the prosecution of the

application which became the '700 Patent. Further, there is a substantial likelihood that a
reasonable examiner would consider these teachings important in deciding whether or not the

claims are patentable. Accordingly, Goto in view of Kramer raises a substantial new question of
patentability as to claims 14 and 22-27, which question has not been decided in a previous
examination of

the '700 Patent.

With respect to Issue #11, the request indicates that the Third Party Requester considers

claims 12-13, 15,22-25,27-31 as being unpatentable over Goto in viewofO'Mara. It is agreed
that the consideration of Goto in view of O'Mara raises a substantial new question of

patentability as to claims 12-13, 15, 22-25, 27-31. Request page 145, line 1 through page 151,

line 3, and the claim chart on pages 43-49,55-58,74-75, 77-80 of Appendix A, are hereby
incorporated by reference from the request for reexamination for their explanation of the teachings provided in Goto in view of 0' Mara that were not present in the prosecution of the

application which became the '700 Patent. Further, there is a substantial likelihood that a
reasonable examiner would consider these teachings important in deciding whether or not the

claims are patentable. Accordingly, Goto in view of O'Mara raises a substantial new question of
patentability as to claims 12-13, 15,22-25, and 27-31, which question has not been decided in a
previous examination of

the '700 Patent.

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With respect to Issue #12, the request indicates that the Third Party Requester considers

claim 26 as being unpatentable over Goto in view of Ledin. It is agreed that the consideration of
Goto in view of Ledin raises a substantial new question of patentability as to claim 26. Request
page 151, line 4 through page 152, line 19, and the claim chart on pages 75-77 of Appendix A,

are hereby incorporated by reference from the request for reexamination for their explanation of
the teachings provided in Goto in view of Ledin that were not present in the prosecution of the

application which became the '700 Patent. Further, there is a substantial likelihood that a
reasonable examiner would consider these teachings important in deciding whether or not the

claims are patentable. Accordingly, Goto in view of Ledin raises a substantial new question of
patentability as to claim 26, which question has not been decided in a previous examination of
the '700 Patent.

With respect to Issue #13, the request indicates that the Third Party Requester considers
claims 22 and 27-31 as being unpatentable over Goto in view of

the Sega 3D Control Pad
Goto in view of

ManuaL. It is agreed that the consideration of

the Sega 3D Control Pad Manual

raises a substantial new question of patentability as to claims 22, and 27-31. Request page 153,
line 1 through page 156, line 9, and the claim chart on pages 74 and 77-80 of Appendix A, are

hereby incorporated by reference from the request for reexamination for their explanation of the
teachings provided in Goto in view of

the Sega 3D Control Pad Manual that were not present in

the prosecution of

the application which became the '700 Patent. Further, there is a substantial

likelihood that a reasonable examiner would consider these teachings important in deciding

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whether or not the claims are patentable. Accordingly, Goto in view of

Page 26

the Sega 3D Control Pad

Manual raises a substantial new question of

patentabilty as to claims 22, and 27-31, which
the '700 Patent.

question has not been decided in a previous examination of

With respect to Issue #14, the request indicates that the Third Party Requester considers
claims 19-21 and 26 as being unpatentable over Goto in view of the PlayStation ManuaL. It is

agreed that the consideration of Goto in view of the PlayStation Manual raises a substantial new

question of patentability as to claims 19-21 and 26. Request page 156, line 10 through page 159,
line 21, and the claim chart on pages 69-77 of Appendix A, are hereby incorporated by reference from the request for reexamination for their explanation of the teachings provided in Goto in view of the PlayStation Manual that were not present in the prosecution of the application which

became the '700 Patent. Further, there is a substantial likelihood that a reasonable examiner
would consider these teachings important in deciding whether or not the claims are patentable.
Accordingly, Goto in view of

the PlayStation Manual raises a substantial new question of

patentability as to claims 19-21 and 26, which question has not been decided in a previous
examination of the '700 Patent.

With respect to Issue #15, the request indicates that the Third Party Requester considers
claims 6-11, 14, and 32-33 as being unpatentable over Goto in view of Chandler, and further in
view of Furukawa' 760. It is agreed that the consideration of Goto in view of

Chandler, and

further in view of

Furukawa'

760 raises a substantial new question of

patentability as to claims 6-

11, 14, and 32-33. Request page 160, line 1 through page 166, line 11, and the claim chart on

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pages 32-43, 49-55, and 80-84 of Appendix A, are hereby incorporated by reference from the

request for reexamination for their explanation of the teachings provided in Goto in view of
Chandler, and further in view of Furukawa' 760 that were not present in the prosecution of

the

application which became the '700 Patent. Further, there is a substantial likelihood that a

reasonable examiner would consider these teachings important in deciding whether or not the

claims are patentable. Accordingly, Goto in view of Chandler, and further in view of
Furukawa'760 raises a substantial new question of

patentability as to claims 6-11, 14, and 32-33,
the '700 Patent.

which question has not been decided in a previous examination of

With respect to Issue #16, the request indicates that the Third Party Requester considers
claims 1-1 i, 13-16, and 27-33 as being unpatentable over Goto in view of

Chandler, and further

in view of Himoto. It is agreed that the consideration of Goto in view of Chandler, and further in
view of Himoto raises a substantial new question of patentability as to claims 1-11, 13-16, and

27-33. Request page 166, line 12 through page 181, line 6, and the claim chart on pages 1-43,
47-62, and 77-84 of Appendix A, are hereby incorporated by reference from the request for
reexamination for their explanation of the teachings provided in Goto in view of Chandler, and
further in view of Himoto that were not present in the prosecution of

the application which
likelihood that a reasonable examiner

became the '700 Patent. Further, there is a substantial

would consider these teachings important in deciding whether or not the claims are patentable.

Accordingly, Goto in view of Chandler, and further in view of Himoto raises a substantial new
question of

patentability as to claims 1-11, 13-16, and 27-33, which question has not been
the '700 Patent.

decided in a previous examination of

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With respect to Issue #17, the request indicates that the Third Party Requester considers

claim 21 as being unpatentable over Goto in view of Chandler, and further in view of Ledin. It is
agreed that the consideration of Goto in view of Chandler, and further in view of Ledin raises a

substantial new question of patentability as to claim 21. Request page 181, line 7 through page
182, line 22, and the claim chart on pages 73-74 of Appendix A, are hereby incorporated by

reference from the request for reexamination for their explanation of the teachings provided in Goto in view of Chandler, and further in view of Ledin that were not present in the prosecution
of

the application which became the '700 Patent. Further, there is a substantial likelihood that a

reasonable examiner would consider these teachings important in deciding whether or not the
claims are patentable. Accordingly, Goto in view of Chandler, and further in view of Ledin

raises a substantial new question of patentability as to claim 21, which question has not been
decided in a previous examination of

the '700 Patent.

With respect to Issue #18, the request indicates that the Third Party Requester considers

claims 1-5 and 13 as being unpatentable over Goto in view of Chandler, and further in view of

O'Mara. It is agreed that the consideration of Goto in view of Chandler, and further in view of
ü'Mara raises a substantial new question of

patentability as to claims 1-5 and 13. Request page

183, line 1 through page 186, line 5, and the claim chart on pages 1-32 and 47-49 of Appendix

A, are hereby incorporated by reference from the request for reexamination for their explanation
of the teachings provided in Goto in view of

Chandler, and further in view ofO'Mara that were
the application which became the '700 Patent. Further, there is

not present in the prosecution of

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a substantial likelihood that a reasonable examiner would consider these teachings important in

deciding whether or not the claims are patentable. Accordingly, Goto in view of Chandler, and
further in view ofO'Mara raises a substantial new question of

patentability as to claims 1-5 and

13, which question has not been decided in a previous examination of the' 700 Patent.

With respect to Issue #19, the request indicates that the Third Party Requester considers
claims 6-11, 14, 21, and 32-33 as being unpatentable over Goto in view of Chandler, and further

in view of Kramer. It is agreed that the consideration of Goto in view of Chandler, and further in
view of Kramer raises a substantial new question of patentability as to claims 6-11, 14, 21, and
32- 33. Request page 186, line 6 through page 193, line 16, and the claim chart on pages 32-43,

49-55, 73-74, and 80-84 of Appendix A, are hereby incorporated by reference from the request
for reexamination for their explanation of the teachings provided in Goto in view of Chandler,

and further in view of Kramer that were not present in the prosecution of the application which

became the '700 Patent. Further, there is a substantial likelihood that a reasonable examiner
would consider these teachings important in deciding whether or not the claims are patentable.
Accordingly, Ooto in view of Chandler, and further in view of

Kramer raises a substantial new

question of

patentability as to claims 6-11, 14,21, and 32-33, which question has not been
the '700 Patent.

decided in a previous examination of

With respect to Issue #20, the request indicates that the Third Party Requester considers
claims 27-31 as being unpatentable over Goto in view of Chandler, and further in view of

the

Sega 3D Control Pad ManuaL. It is agreed that the consideration of Goto in view of Chandler,

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and further in view of

the Sega 3D Control Pad Manual raises a substantial new question of

patentability as to claims 27-31. Request page 193, line 17 through page 196, line 22, and the
claim chart on pages 77-80 of Appendix A, are hereby incorporated by reference from the

request for reexamination for their explanation of the teachings provided in Goto in view of
Chandler, and further in view of

the Sega 3D Control Pad Manual that were not present in the

prosecution of

the application which became the '700 Patent. Further, there is a substantial

likelihood that a reasonable examiner would consider these teachings important in deciding

whether or not the claims are patentable. Accordingly, Goto in view of Chandler, and further in
view of the Sega 3D Control Pad Manual raises a substantial new question of

patentability as to
the '700 Patent.

claims 27-31, which question has not been decided in a previous examination of

With respect to Issue #21, the request indicates that the Third Party Requester considers
claims 17-18 as being unpatentable over Goto in view of Chandler, further in view of

Kramer,

and further in view of

the Sega 3D Control Pad ManuaL. It is agreed that the consideration of

Goto in view of Chandler, further in view of Kramer, and further in view of the Sega 3D Control
Pad Manual raises a substantial new question of

patentability as to claims 17-18. Request page

197, line 1 through page 200, line 9, and the claim chart on pages 62-69 of Appendix A, are
hereby incorporated by reference from the request for reexamination for their explanation of

the

teachings provided in Goto in view of Chandler, further in view of Kramer, and further in view
of the Sega 3D Control Pad Manual that were not present in the prosecution of

the application

which became the '700 Patent. Further, there is a substantial likelihood that a reasonable
examiner would consider these teachings important in deciding whether or not the claims are

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patentable. Accordingly, Goto in view of Chandler, further in view of Kramer, and further in
view of the Sega 3D Control Pad Manual raises a substantial new question of

patentability as to

claims 17-18, which question has not been decided in a previous examination of the' 700 Patent.

With respect to Issues #22 and 23, the request indicates that the Third Party Requester
considers claims 1-11 and 27-3 i as being unpatentable over Goto in view of Himoto, and further

in view of Ledin or further in view of Kramer. It is agreed that the consideration of Goto in view
of Himoto, and further in view of Ledin or further in view of Kramer raises a substantial new
question of

patentability as to claims 1-11 and 27-31. Request page 200, line 10 through page

215, line 21, and the claim chart on pages 1-43 and 77-80 of Appendix A, are hereby
incorporated by reference from the request for reexamination for their explanation of the

teachings provided in Goto in view of Himoto, and further in view of Ledin or Kramer that were
not present in the prosecution of

the application which became the '700 Patent. Further, there is

a substantial likelihood that a reasonable examiner would consider these teachings important in
deciding whether or not the claims are patentable. Accordingly, Goto in view of

Himoto, and

further in view of Ledin or Kramer raises a substantial new question of patentabilty as to claims
i -11 and 27-31, which question has not been decided in a previous examination of

the '700

Patent.

With respect to Issue #24, the request indicates that the Third Party Requester considers
claims 3 and 4 as being unpatentable over Goto in view of Himoto, and further in view of

the

PlayStation ManuaL. It is agreed that the consideration of Goto in view of Himoto, and further in

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view of the PlayStation Manual raises a substantial new question of patentabilty as to claims 3-

4. Request page 216, line 1 through page 218, line 15, and the claim chart on pages 24-28 of
Appendix A, are hereby incorporated by reference from the request for reexamination for their
explanation of the teachings provided in Goto in view of Himoto, and further in view of

the

PlayStation Manual that were not present in the prosecution of the application which became the

'700 Patent. Further, there is a substantial likelihood that a reasonable examiner would consider these teachings important in deciding whether or not the claims are patentable. Accordingly,
Goto in view of Himoto, and further in view of the PlayStation Manual raises a substantial new

question of patentability as to claims 3 and 4, which question has not been decided in a previous
examination of

the '700 Patent.

With respect to Issues #25 and 26, the request indicates that the Third Party Requester
considers claims 6- 1 1, 27, and 31 as being unpatentable over Goto in view of Ledin, and further
in view of Kramer or further in view of Furukawa'

760. It is agreed that the consideration of
760 raises

Goto in view of Ledin, and further in view of Kramer or further in view of Furukawa'

a substantial new question of patentability as to claims 6- 11, 27, and 31. Request page 218, line

15 through page 227, line 8, and the claim chart on pages 32-43, 77-78, and 80 of Appendix A,

are hereby incorporated by reference from the request for reexamination for their explanation of
the teachings provided in Goto in view of Ledin, and further in view of

Kramer or Furukawa'760

that were not present in the prosecution of

the application which became the '700 Patent.

Further, there is a substantial likelihood that a reasonable examiner would consider these

teachings important in deciding whether or not the claims are patentable. Accordingly, Goto in

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view of Ledin, and further in view of Kramer or Furukawa'760 raises a substantial new question
of patentability as to claims 6-11, 27, and 31, which question has not been decided in a previous
examination of

the '700 Patent.

With respect to Issue #27, the request indicates that the Third Pary Requester considers
claims 27-31 as being unpatentable over Goto in view of Ledin, and further in view of the Sega
3D Control Pad ManuaL. It is agreed that the consideration of Goto in view of Ledin, and further
in view of the Sega 3D Control Pad Manual raises a substantial new question of

patentability as

to claims 27-31. Request page 227, line 9 through page 230, line 12, and the claim chart on
pages 77-80 of Appendix A, are hereby incorporated by reference from the request for
reexamination for their explanation of the teachings provided in Goto in view of Ledin, and
further in view of

the Sega 3D Control Pad Manual that were not present in the prosecution of

the application which became the '700 Patent. Further, there is a substantial likelihood that a
reasonable examiner would consider these teachings important in deciding whether or not the

claims are patentable. Accordingly, Goto in view of Ledin, and further in view of the Sega 3D
Control Pad Manual raises a substantial new question of patentability as to claims 27-3 i, which
question has not been decided in a previous examination of the' 700 Patent.

With respect to Issue #28, the request indicates that the Third Party Requester considers
claims 1-5, 12-13, 15,22-25, and 27-31 as being unpatentable over Goto in view of 0'

Mara, and

further in view of Kramer. It is agreed that the consideration of Goto in view of 0'

Mara, and

further in view of Kramer raises a substantial new question of patentability as to claims 1-5, 12-

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13, 15,22-25, and 27-31. Request page 230, line 13 through page 240, line 3, and the claim
chart on pages 1-32,43-49,55-58,74-75, and 77-78 of Appendix A, are hereby incorporated by

reference from the request for reexamination for their explanation of the teachings provided in
Goto in view ofO'Mara, and further in view of

Kramer that were not present in the prosecution

of

the application which became the '700 Patent. Further, there is a substantial likelihood that a

reasonable examiner would consider these teachings important in deciding whether or not the
claims are patentable. Accordingly, Goto in view of O'Mara, and further in view of Kramer

raises a substantial new question of patentability as to claims 1-5, 12-13, 15, 22-25, and 27-31, which question has not been decided in a previous examination of the' 700 Patent.

With respect to Issue #29, the request indicates that the Thi