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. 4

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EXHIBIT D

Dockets.Justia.com

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Commissioner for Patents United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450

ww.uspto.gov

I CONTROL NO.

I FILING DATE

I PATENT IN REEXAMINATION

I ATTORNEY DOCKET NO.

95/000226
Brad A. Armstrong P.O. BOX 2048

04/19/07

6351205
EXAMINER

Margaret Rubin

Carson City, NV 89702

I ART UNIT I PAPER

3992
DATE MAILED:

06/04/07

INTER PARTES REEXAMINATION COMMUNICATION

BELOW/ATTACHED YOU WILL FIND A COMMUNICATION FROM THE UNITED STATES PATENT AND TRADEMAR OFFICE OFFICIAL(S) IN CHARGE OF THE PRESENT REEXAMINATION PROCEEDING.

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 communication.

PTOL-207l (Rev.07-04)

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Patent Under Reexamination

Control No.

ORDER GRANTING/DENYING REQUEST FOR INTER PARTES REEXAMINA TION

95/000,226 Examiner
Margaret Rubin

6351205
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

i: PTO/SB/08

DOther:

1. r8 The request for inter partes reexamination is GRANTED.

D An Office action is attached with this order.
r8 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 petit.ion 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.

...v. i Ol\:iii 0111. ¡lal,..H';IIIQ,lh. Vlli..Ç

PTOL-2063 (08/06)

l-öper 1'01. LUU I U"+LO

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Patent Under Reexamination

Transmittal of Communication to Third Party Requester
Inter Partes Reexamination

Control No.

95/000,226 Examiner
MarQaret Rubin

6351205
Art Unit

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 part 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.

PTOL-2070 (5/04)

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Page 2

DECISION GRATING INTE PARTES REEXAINATION

An Office action on the merits does not accompany this

order for inter partes reexamination. An Office action on the
meri ts will be provided in due course. Patent owner is reminded
that no proposed amendment may be made in this proceeding until

after the first Office action on the merits. See 37 CFR

1.939(b).

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I .) Sumary

Substantial new questions of patentability affecting claims
1-5, 7 and 8 i of United States Patent Number 6,351,205 (hereafter

"the base patent") are raised by the request for inter partes
reexamination based on the following prior art references2:

1.) Great Britain Document 1 412 298 to Knox published November
5, 1975;

2.) Japanese Document 5-87760 to Furukawa published November 26,

1993 (hereafter "Furukawa '760");
3.) Mason, Switch Engineering Handbook (McGraw-Hill, Inc. 1993) (excerpts ch. 1, 6, 8-11) (hereafter, "Switch Engineering

Handbook") ;
4.) United States Patent No. Re. 34,095 to Padula published October 12, 1992;
5.) Japanese Document S61-100844 published June 27, 1986 to

Kaneko;
6.) Japanese Document S61-103836 published July 2, 1986 to Matsumoto; and

7.) United States Patent No.5, 164,697 to Kramer published

November 17, 1992.

i Al though an SNQ was not raised for claims 6 and 9, they will be reexamined

as well as claims 1-5, 7 and 8.

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The above substantial new questions of patentability are

based in part on patents and/or printed publications already
cited/considered in an earlier concluded examination of the

patent being reexamined. On November 2, 2002, Public Law 107273 was enacted. Title III, Subtitle A, Section 13105, part (a)

of the Act revised the reexamination statute by adding the

following new last sentence to 35 U. S. C. 303 (a) and 312 (a) :

"The existence of a substantial new question of patentability
is not precluded by the fact that a patent or printed

publication was previously cited by or to the Office or
considered by the Office."

For any reexamination ordered on or after November 2, 2002,

the effective date of the statutory revision, 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.

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In the present instance, there exists an SNQ based solely

on Kramer and based in part on Furukawa '760. A discussion of
the specifics now follows:

As discussed on pages 14 and 15 of the request, during the
prosecution history of the base patent, the prior art of record,

including Kramer, was viewed as lacking an analog or variable

output sensor together with snap-through tactile feedback (see
the Reasons for Allowance of October 12, 2001) although it

appears as if Kramer was at least formerly viewed as comprising

a variable conductance pressure sensi ti ve sensor (see the Office
action of April 19, 2000 ) albeit specific details are lacking.

Further, the Patent Owner argued that Kramer lacked a teaching
of a dome shaped cap (see the response of January 29, 2001.)

However, the discussion of Kramer in the base patent prosecution
history does not include mention of Kramer at col. 1, lines 2151, col. 4, line 63 to col. 5, line 8 and col. 5, lines 36-50.

Consideration of these portions of Kramer does plausibly suggest
that Kramer may include a variable output sensor with snapthrough tactile feedback and a dome shaped cap.

Similarly, during the prosecution history of the base

patent, Furukawa '760 was never viewed in combination with the
Swi tch Enqineerinq Handbook (a newl V presented reference) as

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Furukawa and the Switch Engineering Handbook appears to provide

a teaching for a variable output sensor with snap-through
tactile feedback.

Insofar as the record does not reflect that the portions of the text of Kramer that are relied upon in the request were fully appreciated for all they suggest nor was the combination
of Furukawa '760 and the Switch Engineering Handbook considered,

the request successfully presents both Kramer and Furukawa '760
in a new light in contrast to how it was viewed during the

prosecution history of the base patent. See Ex parte Chicago
Rawhide Mfg. Co., 223 USPQ 351 (Ed. Pat. App. & Inter. 1984).

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II.) Issues Raised by Requester

The Requester asserts that the cited references raise substantial new questions of patentability when interpreted in
the following manner3:

1.) "Matsumoto, which was not cited, discloses variable sensors
wi th snap-through tactile feedback and anticipates claims 3 and

4 under 35 U.S.C. § 102."
2.) "Kaneko, which was not cited, discloses variable sensors
wi th snap-through tactile feedback and anticipates claims 3 and

4 under 35 U.S.C. § 102."
3.) "Knox, which was not cited, discloses variable sensors with
snap-through tactile feedback and anticipates claims 3 and 4

under 35U.S.C. § 102."
4.) "Kramer, which was cited but was mischaracterized by the
applicant as not including snap-thrOugh tactile feedback,
anticipates claims 1-5 and 7-8 under 35 U. S. C. § 102."

5.) "Furukawa '760, which was also cited but was also

mischaracterized by the applicant as not including snap-through

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tactile feedback, anticipates claims 1-5 and 7-8 under 35 U. S. C.

§ 102."

6.) "Claims 6 and 9 would have been obvious over Kramer in view
of Furukawa '760 and Kawashima."

7.) "Claims 6 and 9 would have been obvious over Furukawa '760
in view of Kawashima and Pepper."

8.) "Claims 5 and 7-8 would have been obvious over Kramer in
view of Furukawa '760."

9.) "Claims 1-5 and 7-8 would have been obvious over Furukawa
'760 in view of the Switch Engineering Handbook under 35 U. S. C.

§ 103." and
10.) "Claims 1-4 would have been obvious over Kramer in view of

Padula and Matsumoto under 35 U. S. C. § 103."

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III.) Prosecution History

The base patent issued from United States Patent

Application 09/455,821 (hereafter "the base application".) The
base application is a continuation of United States Patent

Application 09/106,825 and a continuation of United States

Patent Application 08/677,378. United States Patent Application
08/677,378 is a continuation in part of United States Patent

Application 08/393,459 and a continuation in part of United
States Patent Application 07/847,619.

A non-final Office action including a rejection of claims
1-6 under 35 USC 103 (a) as being unpatentable over Kramer or

Kambric in view of Murata, a rejection of claim 7 under 35 USC
102 (b) as being anticipated by Kambric and a rej ection under the

judicially created doctrine of double patenting of claims 1- 6

over claims 1-6 of U. S. Patent No.5, 999,084 was mailed for the

base application on April 19, 2000. It is noteworthy that this
former claim 1 was an apparatus claim and included limitations

drawn to the snap-through dome-cap and a variable output. In an amendment received January 29, 2001, claims 1-7 were cancelled

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requirement was mailed on May 3, 2001 which required election of
one of the following groups: Group I including claims 8-19,

Group II including claim 20 or Group III including claims 21-24.

In an amendment received May 29, 2001, Patent Owner called for the election of Group III claims 21-24 and the cancellation
of claims 8-20; however, a Notice of Non-Compliant Amendment was

sent out in response on June 19, 2001 and Patent Owner complied

with its requirements by submitting another amendment on

September 5, 2001 which cancelled claims 8-24 and introduced new
claims 25-33. Claims 25-33 were all method claims and, of these,

claims 25, 27, 29 and 31 were independent claims. A Notice of

Allowance was mailed on October 12, 2001 accompanied with an
interview summary dated September 19, 2001, an examiner's
statement of reasons for allowance and examiner's amendment.

Claims 25-33 were renumbered as claims 1-9, respectively - the
same - numbering that appears in the base patent.

The Examiner's Statement of Reasons for Allowance states:

"The claimed method of employing an analog or variable output
sensor with a snap tactile feedback is not disclosed or

suggested by the prior art of record." The interview summary
includes a similar statement although it includes an error
insofar as it states that claim 30 would be amended to insert

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ul timately amended instead by the Examiner's Amendment.

Page 11

Further, claim 30 already included recitation of "snap-through
tactile feedback" by virtue of its dependency from claim 29.

Thus, it is clear from the Examiner's Statement of Reasons for Allowance and the interview summary included in the base

patent prosecution history that at the time of allowance, all of
the independent claims were perceived as including the
limi tat

ion of an "analog or variable output sensor with a snap

tactile feedback" and the base patent issued for that reason.

Accordingly, any reference or combination of references including this teaching would raise a substantial new question
of patentability.

Reviewing the prosecution history of parent application
09/106,825, one sees a similar reason for allowance on August 4,

1999 - "While digital and analog sensors are disclosed in
Mi tchell, there is no suggestion to employ such a sensor with a

snap through dome cap where same is employed in digital

bistate/ on-off devices in the prior art." Further, it is noted
that an Examiner's amendment on August 4, 1999 was made to
clarify that the pressure-sensi ti ve variable-conductance sensor

claimed was analog.
The prosecution history of parent application 08/677,378 is

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Reexamination. More particularly, an Examiner's Reasons for
Allowance was not included with a Notice of Allowance mailed
December 13, 2000; however, the preceding Office action mailed

August 31, 200 stated the following: "The prior art of record
does not teach or suggest placing an input member movable in at

least two axes and finger depressible buttons of claim

43/41/40/39138 or claim 51150149148 onto a flexible sheet." In
a subsequent amendment received September 7, 2000, all of the

previously submitted clàims were cancelled and new claims were
submi tted wherein each of the independent claims included at

least one of the features mentioned in the indication of
allowable subj ect matter of August 31, 2000. Insofar as the base

patent claims do not include recitation of either "an input
member movable in at least two axes" or a "flexible sheet" and
the prior art is rife with teachings of finger depressible
buttons (please see push button 1 of Matsumoto, for instance),

the prosecution history of parent application 08/677,378 is not seen to be immediately germane as to whether the references or combination of references presented in the instant Request for
Reexamination raise a substantial new question of patentability.

Similarly, the claims of U.S. Patent Numbers 5,565,891 and
5,589,828 that i ssupd from aDDlications 08/393,459 and

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There is no claim of domestic priority from the base patent to
either 5,565,891 or 5,589,828.

Further, neither of these

patents include recitation of an analog or variable output sensor with a snap tactile feedback. The prior art of record for

these patents are also not seen to be disposi ti ve of whether the
references or combination of references presented in the instant

Request for Reexamination raise a substantial new question of

patentabili ty.

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iv) Analysis

Matsumoto, taken alone:

On pages 28-31 of the request, Requester presents arguments

that Matsumoto, taken alone, raises an SNQ with respect to

claims 3 and 4.

It is noted that Requester alleges that

Matsumoto teaches an analog or variable output sensor with a
snap tactile feedback.

To support this contention, Requester quotes from Matsumoto at 1 and 2-3,4, respectively:
"The present invention relates to a variable resistance switch of which the on/off switching can be easily recognized through the feeling of pressure on a fingertip and the resistance between two terminals can be changed depending on how much the push button of the switch is pressed."
"The purpose of the present invention is to resolve the above problems with the prior art variable resistance switch and to provide an excellent variable resistance switch in which a switchover point (click point) is provided in the middle of the stroke of the push button so that the operator clearly recognizes switching from the off-state to the on-state in the course of the pressing operation, and the resistance between two terminals is changed when the push button is further pressed."

The foregoing item-matching provided by Requester does

indeed plausibly suggest that Matsumoto teaches an analog or
variable output sensor with a snap tactile feedback. As

discussed in section III devoted to the prosecution history of

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including such teachings do raise an SNQ at least for an

independent claim such as claim 3.
wi th regard to claim 4, Requester relies heavily on the
principle of inherency in asserting that Matsumoto teaches a

second tactile snap-through feedback. Such a teaching would
also raise an SNQ insofar as the prosecution history indicates

that the base patent was allowed because the prior art of record

was not seen as including a teaching of variable output sensor
wi th a snap tactile feedback. Through deductive reasoning, one

can fairly draw the conclusion that if the prior art of record
during the prosecution was seen as failing to teach a variable output sensor with a snap tactile feedback, then it also was not seen as teaching a variable output sensor with a second snap
tactile feedback where the latter conclusion is only a
particular case of the first generality.

To support the contention that Matsumoto teaches a second
tactile snap-through feedback, Requester relies on the same

quotes provided with regard to claim 3.

It is agreed that

mention within Matsumoto of "a feeling of pressure" with regard
to off switching does suggest at least the "receiving of said

second snap-through tactile feedback" (where on switching
represents the first snaD-throuah tactile feedback). and.

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of inherency.

Page 16

However, a decision regarding whether the

evidence is sufficient to support a rej ection will not be made

until the next Office action.

Despite the fact that Requester's allegation that Matsumoto

raises an SNQ for claims 3 and 4 relies on the theory of
inherency and the question of whether the Office will adopt that
posi tion has not been decided, insofar as evidence was offered

to support Requester's assertions, a reasonable examiner would
consider it important to consider Matsumoto in relation to

claims 3 and 4.
The teachings of Matsumoto are not cumulative to the

teachings of the prior art discussed on the record in relation
to claims 3 and 4.

Further, they were not previously considered

nor addressed in the same light during the prior examination or
a final holding of invalidity by Federal Courts and a reasonable

examiner would consider the teachings to be important in
deciding whether or not to allow claims 3 and 4.

Kaneko, taken alone:

On pages 31-33 of the request, Requester presents arguments that Kaneko. taken alone. raises an SNO with resnert to rlaims L

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an analog or variable output sensor with a snap tactile

Page i 7

feedback.
To support this contention, Requester quotes from the
Kaneko translation at i, 2 and 7 , respectively:

The present invention relates to a variable resistance switch in which on/off switching can be easily recognized through the feeling of pressure on a fingertip and the resistance between two terminals can be changed depending on how far the push button of the switch is pressed.

The purpose of the present invention is to resolve the above problems with the prior art variable resistance switch and to provide an excellent variable resistance switch in which a switchover point (click point) is provided in the middle of the stroke of the push button so that the operator clearly recognizes the switching from the off-state to the on-state in the course of the pressing operation.
With the push button 1 being further pressed, the pressure-sensitive electro-conductive rubber 6 is compressed and has reduced resistance, which gradually reduces the resistance between the terminals 7 A and 7B. When pressing is discontinued, the restoration of the elastic electro-conductive curved plate 3 pushes up the push button 1 and the elastic electro-conductive curved plate 3 returns to the no-load state so that it is no longer in contact with the pressure-sensitive electro-conductive rubber 6, with the resistance between the terminals 7 A and 7B reaching an infinite value.

The foregoing item-matching provided by Requester does indeed plausibly suggest that Kaneko teaches an analog or variable output sensor with a snap tactile feedback. As

discussed in section III devoted to the prosecution history of
the base patent, a prior art reference or combination of references including such teachings do raise an SNQ at least for

an independent claim such as claim 3.
As was the circumstance with Matsumoto discussed above with
regard to claim 4, Requester relies heavily on the principle of

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snap-through feedback.

Page 18

Such a teaching would also raise an SNQ

insofar as the prosecution history indicates that the base

patent was allowed because the prior art of record was not seen
as including a teaching of variable output sensor with a snap tactile feedback. Through deductive reasoning, one can fairly
draw the conclusion that if the prior art of record during the

prosecution was seen as failing to teach a variable output

sensor with a snap tactile feedback, thën it also was not seen
as teaching a variable output sensor with a second snap tactile
feedback where the latter conclusion is only a particular case
of the first generality.

To support the contention that Kaneko teaches a second
tactile snap-through feedback, Requester relies on the same

quotes provided with regard to claim 3.

It is agreed that

mention within Kaneko of "a feeling of pressure" with regard to
off switching does suggest at least the "receiving of said

second snap-through tactile feedback" (where on switching
represents the first snap-through tactile feedback), and,

accordingly, there is evidence to support requester's allegation
of inherency.

However, a decision regarding whether the

evidence is sufficient to support a rejection will not be made

iint-il t-hp npvt- nrrirp ;:rt-inn

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Despi te the fact that Requester's allegation that Kaneko

raises an SNQ for claims 3 and 4 relies on the theory of
inherency and the question of whether the Office will adopt that

position has not been decided, insofar as evidence was offered to support Requester's assertions, a reasonable examiner would
consider it important to consider Kaneko in relation to claims 3

and 4.
The teachings of Kaneko are not cumulative to the teachings

of the prior art discussed on the record in relation to claims 3

and 4.

Further, they were not previously considered nor

addressed in the same light during the prior examination or a
final holding of invalidity by Federal Courts and a reasonable

examiner would consider the teachings to be important in
deciding whether or not to allow claims 3 and 4.

Knox, taken alone:

On pages 34-36 of the request, Requester presents arguments that Knox, taken alone, raises an SNQ with respect to claims 3

and 4.

It is noted that Requester alleges that Knox teaches an

analog or variable output sensor with a snap tactile feedback.

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To support this contention, Requester quotes from the Knox
at 3, lines 98-1154 and at 4, lines 30-33, respectively, as

follows:
Depression of the key bearing the number 1, for example, cause (sic) compression of the part of the

foam on which the conductive tracks connected to terminals D and E are positioned. Compression of the
foam by an overlying key results in the conductive tracks underlying the key being brought into contact with the conductive layer 14. The resistance on contact decreases with increased pressure on the key and in an experimental keyboard was found to be 100 k for 40 Z, 50 k for 80 Z and 15 k for 16 OZ. The spacer ensures infinite resistance when the key is underpressed. Thus, a resistance drop is observed

between terminal D and layer 14, and between terminal E and layer 14 when the key bearing the number
'1' is depressed.

If desired, each key can be arranged to act against a metal spring so that a snap-action and an audible 'click' is obtained on depressing the key.

Insofar as the above quotes do not expressly mention an

analog or variable sensor or the operation of the same in direct

terms, Requester again relies on the theory of inherency. While
a decision regarding whether sufficient evidence has been presented to accept Requester's assertion will not be made until the next Office action, it is noted that Requester has provided
evidence such that a reasonable examiner would consider it
important to consider Knox in relation to claim 3. The teachings

of Knox are not cumulative to the teachings of the prior art
discussed on the record in relation to claim 3.
Further, they

were not previously considered nor addressed in the same light

during the prior examination or a final holding of invalidity by
Federal Courts.

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In contrast, Requester's arguments do not provide

Page 21

sufficient evidence that Knox raises an SNQ with regard to claim

4. More particularly, the limitations of claim 4 hinge on the
requirement of claim 3 of a second snap-through tactile
feedback. Al though it iS possible that such feedback is

inherent, Requester has not provided logical reasoning to
support such a conclusion. More particular, Requester i temmatches a second snap-through tactile feedback to Knox at 3,

lines 98-115 but no discussion of the same is seen to be

present. That said, Knox remains available for use in a
rejection of claim 4, or any other suitable use, if it is later

viewed in a different light than the manner it has been
presented in the request.

Kramer, taken alone:

On pages 36-44 of the request, Requester presents arguments
that Kramer, taken alone, raises an SNQ with respect to claims

1-5 and 7-8.

It is noted that Requester alleges that Kramer

teaches an analog or variable output sensor with a snap-through

tactile feedback as recited in independent claims 1, 3 and 5 and

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dependent claim 8.

Independent claim 7 only requires an analog

sensor with snap tactile feedback.

To support this contention, Requester quotes from Kramer at
col. 4, line 63 to col. 5, line 8 and col. 5, lines 36-50,

respectively:
The pressure-dependent contact resistance between the contact surface 18 of the carbonized plastic foil and the contact surfaces 15.1 and 15.2 of the contact linings 11.1 and 11.2 of the conductor strips 12.1 and 12.2 of the printed circuit board 10 is schematically indicated in FIG. 2 by means of the resistances Rk(P) controlled by a pressure P. These resistances diminish linearly as the contact pressure increases, the linear relationship being preserved over a range of two to three powers of ten. This contact pressure is constituted by the operating pressure P acting on the pushbutton 22, since the spring element 20 transfers this pressure to the contact surface 18 of the carbonized plastic foíl14. In another advantageous embodiment of such an input keyboard that is not illustrated in the drawing attached hereto, the spring element 20 is attached to the ceiling surface of a rubber dome of a contact mat that is arranged between the bottom 27 of a pushbutton 22 and the said spring element 20. Like the thin insulating plate in the previous embodiment, the rubber dome bears against the printed circuit board 10 and, upon the depression of the appropriate pushbutton 22, will first actuate a switching process with a snap effect and subsequently permit pressure-dependent adjustment of a function variable.

The foregoing item-matching provided by Requester does indeed plausibly suggest that Kramer teaches an analog or
variable output sensor with a snap tactile feedback. As

discussed in section III devoted to the prosecution history of
the base patent, a prior art reference or combination of references including such teachings do raise an SNQ at least for

claims requiring an analog or variable output sensor with snap
tactile feedback such as claims 1, 3, 5, 7 and 8.

The teachinqs of Kramer are not cumula t i ve to the teachinqs

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i, 3, 5, 7 and 8.

Page 23

Further, they were not previously considered

nor addressed in the same light during the prior examination or
a final holding of invalidity by Federal Courts and a reasonable examiner would consider the teachings to be important in
deciding whether or not to allow claims i, 3, 5, 7 and 8.

It is not agreed; however, that Kramer raises an SNQ with

respect to claims 2 and 4. The request asserts that many of the
limi tations of such claims are inherently taught by Kramer but

provides no evidence or convincing arguments to buttress the
generalizations made regarding, for example, why Kramer

necessarily includes the second and third snap-through feedback
reci ted in claim 2 or the second snap-through feedback recited

in claim 4. Accordingly, i t is not agreed that Kramer raises an
SNQ for claims 2 and 4; however, Kramer remains available for

use in a rej ection of claims 2 and 4, or any other suitable use,
if it is later viewed in a different light than the manner it

has been presented in the request.
Furukawa '760, taken alone

On pages 44-52 of the request, Requester presents arguments

that Furukawa '760, ta ken alone. ra i ses an SNO with respect to

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To reiterate, the prosecution history of the base patent

reflects that both the limitations of an analog or variable

output sensor and snap tactile feedback in combination were

determinant in allowing the base patent application (see section

I I I.) It is not agreed that Furukawa '760, taken alone, raises
an SNQ with respect to claims 1-5, 7 and 8 based on the

rationale presented in the request. More particularly, for each
of independent claims 1, 3, 5 and 7 and dependent claim 8,

Requester argues that snap or snap-through tactile feedback is
inherently present; however, neither a convincing line of
reasoning nor evidence is provided to support this assertion.

Rather, a bare assertion is made that the components of Furukawa
'760 operate such that the feedback prescribed by the
independent claims is produced.

Similarly, Requester relies on the theory of inherency in alleging that Furukawa '760 teaches a second and third snap-

through tactile feedback as required by claim 2 and a second and
another tactile feedback as required by claim 4 but bare

assertions are again put forward that cannot take the place of logical reasoning or evidence. A decision is not made herein
regarding whether snap or snap-through tactile feedback is

inherentlv Dresent - thAt rleterminAtion will he inc:Jiirlerl in the

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drawn to that issue that are included in the request are
insufficient for Furukawa '760, taken alone, to raise an SNQ for
claims 1-5, 7 and 8.

Kramer in view of Furukawa '760 and Kawashima:

On pages 52. and 53 of the request, Requester presents

arguments that Kramer in view of Furukawa '760 raises an SNQ

wi th respect to claims 6 and 9.
It is not agreed that Kramer in view of Furukawa '760 and Kawashima raises an SNQ with respect to claims 6 and 9 based on
the discussion included in the request. More particularly,

Kramer is relied upon only to teach the limitations of claims 5
and 8 from which claims 6 and 9 , respectively, depend. It is

noted that Requester points out the Furukawa does teach changing
the speed of a character in a video game according to the
magni tude of a pressing force but United States Patent No.

5,287,089 to Parsons, already of record, includes a similar

teaching (see discussion of the cursor speed in the abstract,
for instance.) While the teaching of Furukawa '760 of varying

the speed of a character may well be functionally equivalent to
varvina firina sDeed, it is nonetheless cumulative to the

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Also, Requester does not state where Kawashima discloses
varying firing speed.

Further, a review of Kawashima reflects

that nothing is explicitly disclosed about varying firing speed
(there is disclosure that the prior art had the drawback of

being limited to a single shot) and Requester did not argue that the same is inherent. A decision is not made here regarding

whether such teaching is inherent but, if appropriate, the
question may be revisited in future Office actions. Insofar as

the request does not provide evidence or logical reasoning to support the position that Kawashima inherently teaches varying firing speed, based on the request, Kawashima at least facially
appears to be cumulative to Parsons.

Furukawa '760 in view of Kawashima and Pepper:

On pages 53-55 of the request, Requester presents arguments

that Furukawa '760 in view of Kawashima and Pepper raises an SNQ

wi th respect to claims 6 and 9.
It is not agreed that Furukawa '760 in view of Kawashima

and Pepper raises an SNQ with respect to claims 6 and 9. More
particularly, Furukawa '760 is relied upon only to teach the
limitations of claims 5 and 8 from which claims 6 and 9.

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'760 fails to raise an SNQ with respect to claims 5 and 8. It
is noted that Requester points out the Furukawa does teach

changing the speed of a character in a video game according to
the magnitude of a pressing force but United States Patent No.

5,287,089 to Parsons, already of record, includes a similar
teaching (see discussion of the cursor speed in the abstract,

for instance.) While the teaching of Furukawa '760 of varying

the speed of a character may well be functionally equivalent to varying firing speed, it is nonetheless cumulative to the

similar teaching of Parsons. Also, Requester does not state
where Kawashima and Pepper disclose varying firing speed.

Further, a review of Pepper and Kawashima reflects that nothing
is explicitly disclosed about varying firing speed (there is

disclosure that the prior art had the drawback of being limited
to a single shot in Kawashima and disclosure of multiple shots
in Pepper) and Requester did not argue that the same is

inherent. A decision is not made here regarding whether such
teaching is inherent in Kawashima and Pepper but, if

appropriate, such questions may be revisited in future Office

actions. Insofar as the request does not provide evidence or logical reasoning to support the position that Kawashima and
Pepper inherently teach varvina firina speed, based on the

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request, Kawashima and Pepper at least facially appear to be
cumulati ve to Parsons.

Kramer in view of Furukawa '760:

On page 55 of the request, Requester presents arguments
that Kramer in view of Furukawa '760 raises an SNQ with respect
to claims 5 and 7-8.

While Kramer, taken alone, does raise an SNQ with respect
to claims 5 and 7 -8, as stated above, it is not agreed that
Furukawa raises an SNQ for claims 5 and 7 -8, even when it is

used to supplement the teachings of Kramer. More particularly,

Furukawa '760 is relied upon only as a teaching of a variable

output sensor to control an electronic game. However, United
States Patent No.5, 689,285 to Asher, already of record,

includes a similar teaching (see discussion of a resistive

membrane sensor having a pressure-variable resistor used for
video games in the abstract, for instance.) Thus, based on the
arguments put forth in the request, the teaching wi thin Furukawa

'760 of a variable output sensor to control an electronic game
is cumulative to teachings already of record.

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Furukawa '760 in view of the Switch Engineering Handbook:

Page 29

On pages 56-66 of the request, Requester presents arguments

that Furukawa '760 in view of the Switch Engineering Handbook
raises an SNQ with respect to claims 1-5 and 7-8.

It is noted that Requester alleges that Figure 11.5 of the Switch Engineering Handbook teaches a dome cap that resembles

the dome cap of Furukawa '760 yet possesses snap-through tactile

feedback as recited in independent claims 1, 3 and 5 and

dependent claim 8. Independent claim 7 only requires an analog
sensor with snap tactile feedback.

To support this contention, Requester quotes the Switch

Engineering Handbook at 11.14 regarding the "tactile feel" of

swi tches with high snap ratios and paraphrases a description of
the desirability of good tactile feel at 1.48-1.49.

The foregoing item-matching provided by Requester does

indeed plausibly suggest that the Switch Engineering Handbook

teaches snap-through tactile feedback and it also plausibly
suggests that one of ordinary skill in the art would be
moti vated to combine such teaching with the teachings of a

variable output sensor from Furukawa '760. As discussed in
section III devoted to the prosecution history of the base

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including such teachings do raise an SNQ at least for claims

requiring an analog or variable output sensor with snap tactile
feedback such as claims i, 3, 5, 7 and 8.

Accordingly, it is agreed that Furukawa '760 in view of the
Swi tch Engineering Handbook raises an SNQ with respect to claims

i, 3, 5, 7 and 8. The teachings of Furukawa '760 in view of the
Swi tch Engineering Handbook are not cumulative to the teachings

of the prior art discussed on the record in relation to claims
i, 3, 5, 7 and 8.

Further, they were not previously considered

nor addressed in the same light during the prior examination or
a final holding of invalidity by Federal Courts and a reasonable

examiner would consider the teachings to be important in
deciding whether or not to allow claims i, 3, 5, 7 and 8.

It is not agreed; however, that Furukawa '760 in view of

the Switch Engineering Handbook raises an SNQ with respect to

claims 2 and 4. The request does not provide item-matching nor
does it otherwise specifically address the second and third
snap-through feedback of claim 2 or the second snap-through

feedback of claim 4. While the question of whether such
features may at least be inherent within Furukawa '760 or the
Swi tch Engineering Handbook will not be decided herein, insofar

as Requester provides no evj denr:e or r:onvincina araiJments to

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view of the Switch Engineering Handbook, as presented in the
request, raise an SNQ for claims 2 and 4.

Both references

remain available for use in a rej ection of claims 2 and 4, or

any other suitable use, if they are later viewed in a different

light.

Kramer in view of Padula and Matsumoto:

On page 55 of the request, Requester presents arguments

that Kramer in view of Padula and Matsumoto raises an SNQ with

respect to claims 1-4.
Insofar as Kramer, taken alone, does raise an SNQ with

respect to claims 1 and 3, as stated above, it is superfluous to
supplement the teachings of Kramer with the teachings of Padula
and Matsumoto in this respect.

However, insofar as Kramer was

not found to raise an SNQ with respect to claims 2 and 4
(supra), Requester's allegation that both Padula and Matsumoto

teach a second snap-through tactile feedback is a relevant

issue.
To be specific, the prosecution history indicates that the
base Datent was all nwerl heral1se the Dri nr art nf recorrl was not

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snap tactile feedback. Through deductive reasoning, one can fairly draw the conclusion that if the prior art of record

during the prosecution was seen as failing to teach a variable
output sensor with a snap tactile feedback, then it also was not seen as teaching a variable output sensor with a second snap
tactile feedback where the latter conclusion is only a
particular case of the first generality.

Requester argues that Padula and Matsumoto teach a second

snap-through tactile feedback. This feature has already been
discussed herein with respect to Matsumoto where it was decided
that at least some evidence has been provided that Matsumoto
does indeed teach this feature (supra.) With regard to Padula,

Requester quotes the following text from column 9, lines 30-32:

"When pressure is removed from the stylus tip, the dome snaps

back to its original undeformed state, ready for the next

operation." The foregoing item-matching provided by Requester
does indeed plausibly suggest that Padula teaches a second snapthrough tactile feedback.

Further, insofar as Requester has

provided a motivation to combine either Padula or Matsumoto with
Kramer, a reasonable examiner would consider it important to
consider the combination of Kramer in view of Padula and
Matsumoto in relation to claims 2 and 4.

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The teachings of Kramer in view of Padula and Matsumoto are

not cumulative to the teachings of the prior art discussed on

the record in relation to claims 2 and 4. Further, they were
not previously considered nor addressed in the same light during the prior examination or a final holding of invalidity by
Federal Courts and a reasonable examiner would consider the

teachings to be important in deciding whether or not to allow

claims 2 and 4.

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V.) Conclusion

NOTICE RE PATENT OWNR'S CORRSPONDENCE ADDRESS

provide that:

Effective May 16,2007,37 CFR 1.33(c) has been revised to

The patent owner's correspondence address for all communications in an ex parte reexamination or an inter partes reexamination is designated as the correspondence address of the patent.

Revisions and Technical Corrections Affecting
Requirements for Ex Parte and Inter Partes

Reexamination, 72 FR 18892 (April 16, 2007) (Final
Rule)
The correspondence address for any pending reexamination proceeding not having the same correspondence address as that of the patent is, by way of this revision to 37 CFR 1.33 (c) , automatically changed to that of the patent file as of the effective date.
This change is effective for any reexamination proceeding which is pending before the Office as of May 16, 2007, including the present reexamination proceeding, and to any reexamination proceeding which is filed after that date.
Parties are to take this change into account when filing papers, and direct communications accordingly.
In the event the patent owner i s correspondence address listed in the papers (record) for the present proceeding is different from the correspondence address of the patent ,it is strongly encouraged that the patent owner affirmatively file a Notification of Change of Correspondence Address in the reexamination proceeding and/or the patent (depending on which address patent owner desires), to conform the address of the

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Telephone Numbers for reexamination inquiries:

Reexamination and Amendment Practice Central Reexam Unit (CRU) Reexamination Facsimile Transmission No.

[phone] [phone] [phone]

Extensions of time under 37 CFR 1.136 (a) will not be

permitted in inter partes reexamination proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and not

to parties in a reexamination proceeding. Additionally, 35
U. s. C. 314 (c) requires that in ter partes reexamination

proceedings "will be conducted with special dispatch" (37 CFR

1. 937).

Patent owner extensions of time in inter partes

reexamination proceedings are provided for in 37 CFR 1.956.

Extensions of time are not available for third party requester comments, because a comment period of 30 days from service of
patent owner's response is set by statute.

35 U.S.C. 314 (b) (3).

The patent owner is reminded of the continuing
responsibility under 37 CFR 1.985 (a), to apprise the Office of
any litigation acti vi ty, or other prior or concurrent

proceeding , involving the base patent throughout the course of

this reexamination proceeding. The third party requester is also

reminded of the ability to similarly apprise the Office of any

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such acti vi ty or proceeding throughout the course of this
reexamination proceeding. See MPEP § 2686 and 2686.04.

Please

mail

any communications to:

Attn: Mail Stop "Inter Partes Reexam" Central Reexamination Unit Commissioner for Patents P. O. Box 1450

Alexandria VA 22313-1450

Please FAX any communications to:
[phone] Central Reexamination Unit

Please hand-deliver any communications to:

Customer Service Window Attn: Central Reexamination Unit Randolph Building, Lobby Level 401 Dulany Street Alexandria, VA 22314

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Any inquiry concerning this communication or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number [phone].

/f ~
Conferees:
i

Margaret Rubin Primary Examiner Central Reexamination Unit 3992

\':_--'---)'i"V'l"~~

1#tLv
MARK J. REINHART

SPRE-AU 3992 CENTRAL REEXAMINATION UNIT

Case 9:06-cv-00158-RHC

9S-/000/Z2G
U.S. PATENT DOCUMENTS

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,

INORMATION DISCLÐSURE STATEMENT
REEXAMINATION PRIOR ART

Attorney Docket Number Patent Number Reexam Control Number Reexam Filing Date In re Application of

6620-76454-10 6,351,205 95/000,226 Pending Brad A. Armstrong

Copies of

U.S. Patent documents do not néed to be provided, unless requested by the Patent and Trademar Offce. For patents, provide the patent number and the issue date. For published U.S. applications, provide the publication number and the publication date. For unpublished pending
Datent aDDlications, Drovide the anDlication number and the fiinl! date.

Examiner's Initials.

Cite No.

(optional)

Number
Re. 34,095
.

Publication Date
October 13, 1992 October 12, 1982

fJ
fvýL

Name of Applicant or Patentee
Padula

4,353,552 5,164,697

Pepper
Kramer
(

He

November 17, 1992

FOREIGN PATENT DOCUMENTS
Examiner's Initials.
Cite No.

(oplional)

Country
Great Britain
Japan

Number

Publication Date
November 5, 1975

l1
t12__

Name of Applicant or Patentee
Knox

1412298
5-87760

November 26, 1993 Furukawa
December 4, i 989
June 27, 1986

MR
/1t?

Japan
Japan

HI-40545
S61 -100844 S61 -103836

Kawashima
Kaneko

fI(t
Examiner's
Cite No.

Japan

July 2, 1986

Matsumoto

Initials.

(optional)

rv
EXAMINER
SIGNA TURE:
* Examiner: Initial if

OTHER DOCUMENTS Mason, Switch Engineering Handbook (McGraw-Hil, Inc. i 993) (excerpts, ch. I, 6, 81 1)

~~

DATE CONSIDERED:

S;lv J 07

in conformance and not considered. Include copy of

reference considered, whether or not in conformance with MPEP 609. Draw line through cite ¡fnot this form with next communication to applicant.