Anascape, Ltd v. Microsoft Corp. et al

Filing 58

AFFIDAVIT in Support re 56 MOTION to Stay Litigation Pending Reexamination of the Patents-in-Suit by the Patent Office - Declaration of J. Christopher Carraway filed by Microsoft Corp.. (Attachments: # 1 Exhibit 1# 2 Exhibit 2# 3 Exhibit 3# 4 Exhibit 4# 5 Exhibit 5# 6 Exhibit 6# 7 Exhibit 7# 8 Exhibit 8# 9 Exhibit 9# 10 Exhibit 10# 11 Exhibit 11# 12 Exhibit 12# 13 Exhibit 13# 14 Exhibit 14# 15 Exhibit 15# 16 Exhibit 16# 17 Exhibit 17# 18 Exhibit 18# 19 Exhibit 19# 20 Exhibit 20# 21 Exhibit 21# 22 Exhibit 22# 23 Exhibit 23# 24 Exhibit 24# 25 Exhibit 25# 26 Exhibit 26)(Carraway, J)

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EXHIBIT 1

DECLARATION OF J. CHRISTOPHER CARRAWAY IN SUPPORT OF DEFENDANT MICROSOFT'S MOTION TO STAY PROCEEDINGS PENDING COMPLETION OF THE REEXAMINATION OF THE PATENTS-IN-SUIT

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re Patent No: 6,347,997 Currently in Litigation Styled: Anascape, Ltd. v. Microsoft Corporation and Nintendo of America, Inc., No: 9:06-CV-06-00158-RC (E.D. Tex.) Issued: February 19, 2002 Filed: May 10, 2000 Applicant: Brad A. Armstrong Title: Analog Controls Housed with Electronic Displays Request for Inter Partes Reexamination of Patent MAIL STOP INTER PARTES REEXAMINATION COMMISSIONER FOR PATENTS P.O. BOX 1450 ALEXANDRIA, VA 22313-1450 Sir: Reexamination under 35 U.S.C. §§ 311-316 and 37 C.F.R. § 1.902 et seq. is requested of claims 32 through 37 of United States Patent No. 6,347,997 ("the `997 Patent" or "the Patent" attached as Exhibit 1.) The `997 Patent issued on February 19, 2002, to Brad A. Armstrong. The Requester is Microsoft Corporation ("Requester"). This is a new reexamination request ("Request"). The `997 Patent has not been previously reexamined. In accordance with 37 C.F.R. § 1.985, Requester hereby provides notice that the `997 Patent is asserted against Microsoft in litigation styled Anascape, Ltd. v. Microsoft Corporation, and Nintendo of America, Inc., 06-CV-00158-RC, in the United States District Court for the Eastern District of Texas (the "Litigation").

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In re Patent No. 6,347,997 Requester respectfully submits that, on the basis of previously uncited prior art patents and/or publications, as well as previously cited patents and/or publications being presented in a new light in this Request, substantial new questions regarding the patentability of claims 32-37 of the `997 Patent exist. This reexamination request satisfies the requirements of C.F.R. § 1.915(b), as follows. 37 C.F.R. § 1.915(b)(1): Reexamination of claims 32-37 of the `997 Patent is requested. 37 C.F.R. § 1.915(b)(2): This reexamination request is based on the prior art references listed in Section I. 37 C.F.R. § 1.915(b)(3): A statement of each substantial new question of patentability is presented in Section IV. A detailed explanation of the pertinency and manner of applying the prior art to each claim element in the requested claims is provided in claim charts attached to this Request in Appendices A-D. 37 C.F.R. § 1.915(b)(4): Copies of the references relied upon as well as certified English language translations of pertinent parts of all non-English language documents, are attached as Exhibits 2-12. 37 C.F.R. § 1.915(b)(5): A copy of the entire `997 Patent is included at Exhibit 1. Additionally, a copy of the List of Prior Art Cited by Applicant filed during the prosecution of the `997 Patent is attached as Exhibit 13. Copies of the terminal disclaimers filed by Applicant are attached as Exhibit 14. 37 C.F.R. § 1.915(b)(6): A certification of service of this reexamination request on the purported patent owner is provided on the last page of this reexamination request.

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In re Patent No. 6,347,997 37 C.F.R. § 1.915(b)(7): Requester certifies that this is a new reexamination request, and that therefore the estoppel provisions of 37 C.F.R. § 1.907 do not prohibit this Request. 37 C.F.R. § 1.915(b)(8): Requester, identified above, is the real party in interest to this reexamination request. I. STATEMENT IDENTIFYING THE PRIOR ART REFERENCES ESTABLISHING SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY PURSUANT TO 37 C.F.R. § 1.915(b)(2) The following references, alone or in combination, present substantial new questions of patentability, e.g., anticipation under 35 U.S.C. § 102 and/or obviousness under 35 U.S.C. § 103, as to at least claims 32-37 of the `997 Patent: Exhibit 21 Kazuhiro Matsumoto, Japanese Patent Application Publication No. S61-103836, published July 2, 1986 (hereinafter "Matsumoto") (Ex. 2 includes a certified English translation in accordance with 37 C.F.R. § 1.510(b)(3)); Yasuhi Kawashima et al., Japanese Patent Application Publication No. S62-82090, published December 4, 1989 (hereinafter "Kawashima") (Ex. 3 includes a certified English translation in accordance with 37 C.F.R. § 1.510(b)(3)); Richard Kramer, U.S. Pat. No. 5,164,697, issued November 17, 1992 (hereinafter "Kramer"); Yoshihiro Inoue et al, U.S. Pat. No. 5,207,426, issued May 4, 1993 (hereinafter "Inoue"); Hitoshi Furukawa et al., Japanese Patent Application LaidOpen Disclosure No. H5-87760, published November 26, 1993 (hereinafter "Furukawa `760") (Ex. 6 includes a certified English translation in accordance with 37 C.F.R. § 1.510(b)(3)); Hitoshi Furukawa, Japanese Patent Application Laid-Open Disclosure No. H05-326217, published December 10, 1993 (hereinafter, "Furukawa `217") (Ex. 7 includes a certified

Exhibit 3

Exhibit 4 Exhibit 5 Exhibit 6

Exhibit 7

Pursuant to 37 C.F.R. § 1.915(b)(4), a certified English translation is included for this and all other foreign language references. -3-

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In re Patent No. 6,347,997 English translation in accordance with 37 C.F.R. § 1.510(b)(3)); Exhibit 8 Exhibit 9 Exhibit 10 Exhibit 11 Exhibit 12 II. Kerry O'Mara, U.S. Pat. No. 5,510,812, issued April 23, 1996 (hereinafter "O'Mara"); Michael J. Padula et al., U.S. Patent No. Re. 34,095, issued October 13, 1992 (hereinafter "Padula"); Masayuki Mitsuhashi et al., U.S. Pat. No. 4,766,271, issued August 23, 1988 (hereinafter "Mitsuhashi"). Atsunori Himoto et al., European Patent Application EP 0 835676 A1, published April 15, 1998 (hereinafter "Himoto"). Craig Thorner, et al., U.S. Pat. No. 5,669,818, issued September 23, 1997 (hereinafter "Thorner").

ARMSTRONG FAMILY OF PATENTS BASED ON VARIABLE-CONDUCTANCE SWITCHES A. Armstrong Patents

The `997 Patent applicant, Mr. Armstrong, has filed a large number of patent applications and received a number of patents based on the same non-patentable subject matter of pressure-sensitive variable-conductance switches for game controllers. Twelve of these patents are asserted against Requester in the Litigation. Requester has already filed reexamination requests on Patent Nos. 5,999,084 and 6,102,802. Requester intends to file reexamination requests on each of the twelve patents identified below. The following table lists these twelve patents and indicates (in bold) the patent that is the subject of this request: U.S. Pat. No. 5,999,084 6,102,802 6,135,886 6,208,271 6,222,525 6,343,991 Application 09/106,825 08/942,450 09/122,269 09/148,806 08/677,378 09/510,572 Filed Jun. 29, 1998 Oct. 1, 1997 Jul. 24, 1998 Sep. 4, 1998 Jul. 15, 1996 Feb. 22, 2000 Issued Dec. 7, 1999 Aug. 15, 2000 Oct. 24, 2000 Mar. 27, 2001 Apr. 24, 2001 Feb. 5, 2002 Reexam Dec. 15, 2006 Dec. 13, 2006 Reexam No. TBD 90/008,373 -

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In re Patent No. 6,347,997 6,344,791 6,347,997 6,351,205 6,400,303 6,563,415 6,906,700 09/599,095 09/568,662 09/455,821 09/815,898 09/955,838 09/715,532 Jun. 21, 2000 May 10, 2000 Dec. 6, 1999 Mar. 22, 2001 Sep. 18, 2001 Nov. 16, 2000 Feb. 5, 2002 Feb. 19, 2002 Feb. 26, 2002 Jun. 4, 2002 May 13, 2003 Jun. 14, 2005 Jan. 12, 2007 TBD -

To the extent permissible, Requester requests that the reexaminations of this Patent and the other eleven patents asserted against Requester in the Litigation be handled by the same Examiner or group of Examiners. B. Related Prosecution

In addition to the issued patents, Mr. Armstrong and/or Anascape Ltd. (as the purported owner of the referenced patents and applications) has a number of pending and abandoned patent applications that purport to relate to or claim priority (in whole or in part) to the patents identified above and/or their related applications, including at least the following applications: 09/455,521 09/710,557 09/721,848 09/729,753 09/733,435 09/733,468 09/893,292 10/028,071 10/042,027 10/437,395 10/773,025 11/150,412 11/240,112 11/240,158 11/240,309 11/240,326 11/240,327 11/240,329 11/240,330 11/240,331 11/240,349 11/240,374 11/241,330 11/241,455 11/241,478 11/241,617 11/241,618

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In re Patent No. 6,347,997 III. DETAILED EXPLANATION UNDER 37 C.F.R. § 1.915(b)(3): Pursuant to 37 C.F.R. § 1.915(b)(3), Requester provides below (and in the claim chart mappings in Appendices A-D) "[a] statement pointing out each substantial new question of patentability based on the cited patents and printed publications, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is Requested." A. Legal Standards For Reexamination

As with ex parte reexaminations, a Request for an inter parties reexamination is appropriately granted where the Requester demonstrates the existence of a substantial new question of patentability for at least one claim of the patent. See Manual of Patent Examining Procedure (MPEP), Section 2642(I). Section 2642(I) sets forth the standard for this determination (emphasis in original): A prior art patent or printed publication raises a substantial question of patentability where there is a substantial likelihood that a reasonable Examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable. If the prior art patents and/or publications would be considered important, then the Examiner should find "a substantial new question of patentability" unless the same question of patentability has already been decided as to the claim in a final holding of invalidity by the Federal court system or by the Office in a previous examination. Here, the cited art raises substantial new questions of patentability under 35 U.S.C. § 102 and/or 35 U.S.C. § 103. Patents and/or printed publications already cited/considered in an earlier concluded examination may also raise substantial new questions of patentability where such patents/printed publications are being presented or viewed in a new light, or in a different way, as compared with their use or understanding in earlier concluded examination(s), and are submitted as invalidating prior art references based on new arguments and/or -6-

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In re Patent No. 6,347,997 interpretations contained in the reexamination Request. See MPEP § 2642(II)(A), citing Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351 (Bd. Pat. App. & Inter. 1984). Additionally, admissions made in the patent file or statements placed in the court record may be considered in conjunction with prior art patents or printed publications. See MPEP § 2617. Requester summarizes below and includes for reference copies of statements regarding the field of the invention, as well as stated reasons for patentability made by the patentee during prosecution of the subject patent. Also included are statements made in the specification and/or claims of related patents to which the `997 Patent claims priority, or for which a terminal disclaimer has been filed in the `997 Patent.2 Finally, consistent with initial examinations, the scope given to claim language during reexamination is broad: "During reexamination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. (In re Yamamoto, 211 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984))." MPEP § 2258.I.G. B. Overview Of The Applicant's Admissions Regarding His Claims And The State Of The Prior Art

While the claims of the `997 Patent naturally are the primary focus of this Request, the systems described in the patent's specification, as well as the prosecution history of the patent and the text of related patents provide important context for those claims. Thus, this section summarizes the `997 Patent's description of its alleged invention, as well as the applicant's statements of reasons for allowability of the challenged claims. The patent (and thus the below summary) describes features that it does not recite in the challenged claims.

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In re Patent No. 6,347,997 1. After Rejection Of His Original Claims, Applicant Stated That His New Claims Were Allowable Based On A "Novel And Inventive Arrangement" Of Elements He Acknowledged Already Existed

The `997 Patent, filed May 10, 2000, identifies the primary features contained therein as already existing in the prior art: "Displays, housings, electronics and analog output buttons do exist in the prior art. The present invention, however, does not exist in the prior art . . . ." (`997 Patent, Col. 1, lines 56-58.) On March 15, 2001, the Examiner rejected all of applicant's original claims. In filing new claims on August 14, 2001, Applicant claimed that the alleged invention of these new claims was a "novel and inventive arrangement [of previously existing elements] not taught or suggested by the prior art." (Exhibit 17, `997 Prosecution History, August 14, 2001 Amendment A, page 14.) a) Applicant Claims That His Alleged Invention Combines An Electronic Visual Display With Other Elements

The `997 Patent's title is "Analog Controls Housed with Electronic Displays." Applicant claims that the alleged "novel and inventive arrangement" of the `997 Patent is an electronic device, which may take many forms as herein disclosed, but all including a combination of a electronic visual display in or on a housing, electronic circuitry in the housing, and including at least one human user depressiblc surface with associated analog pressure-sensitive element for output of a signal of variable value utilized by the circuitry to control or manipulate a function(s) of the device." `997 Patent, Col. 1, line 63 ­ Col 2, line 3. (emphases added throughout this Request.) Further, the Summary of the Invention states: An object of the present invention is to provide an electronic device including a combination of an electronic visual
2

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In re Patent No. 6,347,997 display in or on a housing, electronic circuitry in the housing, and at least one analog sensor comprising a finger or thumb depressible surface with associated analog pressure-sensitive element for output of a signal of variable value utilized by the circuitry to manipulate one or more functions of the electronic device at varied rates, the manipulation in some manner indicated on the display at least at the time the user is pressing the depressible surface . . . `997 Patent, Col. 2, lines 34-43, emphasis added. b) Claims 32 Through 37 Do Not Include The Claimed Inventive Combination Of An Electronic Visual Display In A Housing With Other Elements

Claims 32 through 37 form the subject of this Request. These claims, originally filed in the post-rejection amendment as Claims 54 ­ 59, do not disclose any electronic visual display in or on a housing containing electronic circuitry and finger-depressible pressuresensitive variable-conductance sensor(s). Therefore, these claims lack the very inventive feature applicant claims is disclosed in the `997 Patent as a necessary part of his invention. 2. Examiner Allowed Applicant's New Claims After Applicant Stated That There Was A Lack Of PressureSensitive Variable-Conductance Controls In The Prior Art

All of applicant's original claims in the application underlying the `997 Patent were rejected by the Examiner. In a telephonic interview conducted after Examiner initially rejected all 22 of the original claims in the `997 Patent application, which recited an "analog pressure-sensitive element," applicant apparently indicated that he believed there was a "long-felt need in the art" for "variable-conductance pressure-sensitive controls," and that there existed an "absence of such controls before his invention." (Exhibit 16, `997 Prosecution History, May 4, 2001 Interview Summary.) Applicant subsequently cancelled all original claims and filed new ones, including the claims now under consideration.

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In re Patent No. 6,347,997 Following the applicant's submission of new claims for consideration, in a subsequent interview, Examiner stated that new claim 54 (later issued as claim 32 in the `997 Patent) "did not include the patentable material regarding the pressure-sensitive variableconductance sensors." (Exhibit 19, `997 Prosecution History, September 4, 2001 Interview Summary.) Despite this omission, the applicant argued that independent claim 54 was patentable over the prior art "because of the claimed tactile feedback" (Id.) Examiner stated that this would require a further search. (Id.) Subsequently, as a condition for allowance, Examiner amended claim 54 to add a "pressure-sensitive variable-conductance" limitation to the analog sensor disclosed therein. (Exhibit 18, `997 Prosecution History, August 31, 2001 Notice of Allowability, pg. 2.) Examiner's stated reasons for allowance were that the "prior art could not alone or in combination anticipate or make obvious the claimed elements in combination with a pressure-sensitive variable-conductance sensor." (Id., pg. 3.) C. Detailed Description Of The Prior Art Setting Forth The Same Structure Applicant Claimed Was A "Novel and Inventive Combination" 1. Background On Pressure-Sensitive Variable-Conductance Sensors

Sensors with pressure-sensitive variable-conductance layers to generate analog electrical output have been known for years. U.S. Patent 6,102,802, of which the `997 Patent is a continuation in part, points to U.S. Pat. No. 3,806,471 to Mitchell (hereinafter, "Mitchell"), issued in 1974, for Mitchell's disclosure of pressure-sensitive variable conductance material. (Exhibit 21, U.S. Pat. No. 6,102,802 to Brad A. Armstrong (hereinafter, the "`802 Patent"), Col. 6, lines 49-65.) Mitchell disclosed pressure-sensitive variable-conductance materials that "utilize volumetric dispersions of at least one type of particulate material that is at least partially conductive in nature and is disposed within a

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In re Patent No. 6,347,997 predetermined volume of relatively small depth." (Exhibit 20, U.S. Pat. No. 3,806,417 to R. J. Mitchell at Col. 2, lines 58-62.)

Fig. 1 ­ Pressure-Sensitive Variable-Conductance Transducer Disclosed by Mitchell Figure 2 of the Mitchell patent (reproduced here in Fig. 1) illustrates a side-view of a pressure responsive transducer. Material 18 is partially conductive, so that when pressure is exerted on material 18, electrical resistance to current flow between electrode 10 and electrode 20 is reduced. (Id. at Col. 5, line 57 ­ Col. 6, line 35.) "The electrical current is regulated by the force sensitive material 18, in response to the amount of force applied to the material." (Id. at Col. 6, lines 27-30.)

Fig. 2 ­ Structure of Pressure-Sensitive Variable-Conductance Material in Mitchell Figures 3 and 5 of the Mitchell patent (reproduced above in Fig. 2) illustrate the structure of material 18, in which tungsten carbide particles 22 are confined within an elastomeric binder 24. (Id. at Col. 7, lines 11-26.) When force is applied, the tungsten

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In re Patent No. 6,347,997 carbide particles 22 are forced closer together increasing the electrical flow paths through the material.

Fig. 3 ­ Illustration Showing Increased Number of Current Flow Paths With Pressure Figures 4 and 6 of the Mitchell patent (reproduced above in Fig. 3) illustrate the relative number of current flow paths through material 18 with no force applied (Fig. 4) and with pressure applied. (Id. at Col. 7, line 26 through Col. 8, line 2.) Under load, Fig. 6 illustrates that the increased number of current flow paths through material 18, along with other effects, cause a reduction in resistance to current flow. (Id.) In this way, the Mitchell patent discloses how pressure-sensitive variable-conductance materials are used to vary electrical current in response to pressure variations. Mitchell also identifies numerous types of materials that are can be used to make thin pressure-sensitive variable-conductance layers. (Id. at Col. 8, lines 3-33, Col. 11, lines 1634, Col. 12, line 58 through Col. 15, line 60.) Thus, sensors with pressure-sensitive variableconductance layers to generate analog electrical output were disclosed by Mitchell in 1974. 2. The Matsumoto Prior Art

Applying tactile feedback to a variable-conductance pressure-sensitive switch was not a novel concept at the time of the filing of the application leading to the `997 Patent. It was disclosed over a decade earlier by Kazuhiro Matsumoto et al. in Japanese patent application,

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In re Patent No. 6,347,997 entitled "Variable resistance switch," that was published as Publication No. S61-103836 on July 2, 1986. Matsumoto discloses a pressure-sensitive 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. (Matsumoto, pg. 1.) To operate the variable resistance switch 10, a push button 1 is pressed down so that its bottom end pushes an elastic electro-conductive curved plate 3 downward. This results in a change state in the curved plate, and a "click action." (Id. at pg. 7.) When the elastic electro-conductive curved plate 3 undergoes the click action described above, it makes contact with the electrode 4B below it and establishes a conductive path between terminals 4C and 4D, as shown in Figure 4. (Id.)

Fig. 4 ­ Tactile Feedback Click Action Disclosed by Matsumoto Following this tactile feedback, the push button 1 may be further pressed, causing the electro-conductive curved plate 3 to curve downward, contacting the bridge electrode 7, and

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In re Patent No. 6,347,997 compressing the pressure-sensitive electro-conductive rubber 6. (Id.) The resistance through the thickness of the pressure-sensitive electro-conductive rubber 6 is reduced, which allows the current to flow. In this state, the variable resistance switch 10 is at its start point. Further pressure from the user's fingertip further compresses the pressure-sensitive electroconductive rubber 6 and reduces resistance between terminals 5C and 5D, as shown in Figure 5, below. (Id. at pg. 8.) Once pressure is released, the resistance through the thickness reaches an infinite value, nullifying the conductivity between the terminals 5C and 5D. (Id.) Then, the electroconductive curved plate 3 pushes up the push-button 1 and returns to its no load state so that it is no longer in contact with electrode 4B, eliminating conductivity entirely. (Id.)

Fig. 5 ­ Pressure-Sensitive Variable-Resistance With Further Applied Pressure Thus, over a decade before Armstrong filed his first patent application, Matsumoto had already disclosed a pressure-sensitive variable-conductance switch employing tactile feedback to signal when the switch was activated.

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In re Patent No. 6,347,997 3. The Kawashima Prior Art

Three years after Matsumoto was published, on December 4, 1989, Yasushi Kawashima, a named inventor on the original Matsumoto application, had published as Publication No. S62 ­ 82090 his Japanese patent application, entitled "Game Control Decide Equipped with Pressure-Sensitive Rubber Switch." In it, Kawashima discloses utilizing a pressure-sensitive variable-resistance switch in a game controller for varying "the firing of missiles or pistols in a TV game." (Kawashima, Cols. 1 ­ 2.)

Fig. 6 ­ Control Circuit Diagram for a Pressure-Sensitive Variable-Resistance Switch in a Video Game Controller Disclosed by Kawashima. Kawashima states that prior art game controllers used an on/off switch in firing missiles or pistols in a TV game while using variable resistors for "cursor movements." (Id. at Col. 1.) Kawashima discloses using a resistor 1, a capacitor 2, and a switch using pressure-sensitive conductance rubber 3 whose resistance changes with pressing force, an "IC such as a NAND circuit" 4 and variable frequency oscillation circuit 10. (Id. at Col. 3.) In addition, he discloses a relay drive transmitter 5 and a relay 6 in an output circuit controlled by the frequency oscillation circuit. (Id.; see also Figure 6.)

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In re Patent No. 6,347,997 The frequency of the oscillation circuit 10 is a function of the resistance value of the pressure-sensitive conductive rubber switch and the capacity of capacitor 2. (Kawashima, Col. 3.) Thus, the greater the pressure applied to the pressure-sensitive material, the lower the resistance, thus varying the output. Because this device utilizes a pressure-sensitive conductive rubber whose resistance value changes with pressing force in a game control device with an output circuit which, along with connecting a variable frequency oscillation circuit to this pressure-sensitive conductive rubber is controlled by this oscillation circuit. The opening and closing of the cycle switch of a game controller can then be controlled freely by the pressing force from the finger of the user, so it will allow the use of new techniques in playing computer games and elevate the appeal of games. (Kawashima, Col. 4.) Kawashima disclosed putting this switch in the form of an individual button on a video game controller to allow greater control over game action, such as firing pistols or missiles. (Id., Cols. 1 ­ 2, 4; see also Figure 7, above.)

Fig. 7 ­ Pressure-Sensitive Variable-Resistance Switch Employed in a Game Controller disclosed in Kawashima.

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In re Patent No. 6,347,997 Thus, Kawashima disclosed the use of a pressure-sensitive variable-resistance switch in a computer game controller to modify on-screen activity, such as firing missiles, based on varying levels of applied finger pressure to a single button. 4. The Kramer Prior Art

Use of pressure-sensitive variable-conductance material to generate variable analog output from a button on an "Input Keyboard for an Electronic Appliance in Entertainment Electronics" in response to variable pressure applied to the button was disclosed in U.S. Pat. No. 5,164,697 to Richard Kramer, issued on November 17, 1992. The Kramer invention, as the patent title suggests, was directed generally to an input keyboard for an electronic appliance in entertainment electronics. (Kramer, Col. 1, lines 8-10). Kramer also describes providing tactile feedback for the user, referring to prior art devices with pushbuttons for onoff switches having rubber domes, to produce a snap effect. (Id. at Col. 1, lines 10-43.)

Fig. 8 ­ Pressure-Sensitive Variable-Conductance Switch Disclosed by Kramer The Kramer invention improved on the prior art by disclosing "pushbutton switching devices in an input keyboard that can be used to produce not only a switching process but also an adjustment process and will not appreciably complicate the manufacturing process of

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In re Patent No. 6,347,997 such an input keyboard." (Id. at Col. 1, lines 45-51.) The Kramer invention generates a variable output by utilizing a thin carbonized plastic foil with an electrical resistance that varies with the pressure applied to the button. (Id. at Col. 1, line 51 through Col. 2, line 41.) Figure 1 of Kramer shows a cross-section of the pressure-sensitive variableconductance pushbutton (reproduced above in Fig. 8) which depicts a pushbutton 22, a carbonized plastic foil 14, and conductors 12.1 and 12.2. (Id. at Col. 3, line 39 through Col. 5, line 35.) Depressing the pushbutton causes the carbonized plastic foil 14 to come into contact with the contact linings 11.1 and 11.2 (shown by the dotted line in the figure) creating a bridging resistance between conductors 12.1 and 12.2 through the carbonized plastic foil 14. (Id.) The resistance of the carbonized plastic foil 14 diminishes linearly as the pressure on the pushbutton increases. (Id.) Kramer further disclosed a tactile click to be felt by the user upon actuation of the adjustment process, said feedback to be felt by the finger of the user: "At the positions corresponding to the various pushbuttons of the remote control transmitter, rubber domes are formed in the contact mat to act as spring elements. These rubber domes produce a snap effect upon depression of the pushbutton." (Kramer, Col. 1, lines 28-33.) Kramer goes on to state that this snap effect takes place immediately prior to the time that the pressuredependent adjustment function takes place: "the rubber dome bears against the printed circuit board and upon 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." (Id. at Col. 5, lines 43-48.)

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In re Patent No. 6,347,997 Kramer, thus, in 1992 disclosed a controller with a pushbutton having a variable output that is proportional to the pressure applied to the pushbutton, with a dome cap providing an active break-over threshold tactile feedback to the user. 5. The Inoue Prior Art

U.S. Pat. No. 5,207,426 to Inoue, and assigned to Nintendo, entitled "Controller for a Game Machine," issued on May 4, 1993. While Inoue does not disclose pressure-sensitive variable-conductance sensors, it does disclose other typical features of video game controllers that existed well before the application for the `997 Patent. Figure 1 of the Inoue patent is reproduced here in Fig. 9, below.

Fig. 9 ­ Video Game Controller Disclosed by Inoue As shown in the figures, Inoue discloses a video game controller with a cross-shaped key 121 on the left side and various other control buttons, including buttons located on the right side of the controller, such that the video game can be played by holding the controller in two hands. 6. The Furukawa `760 Prior Art

Specific application of known pressure-sensitive variable-conductance materials in a controller for controlling video game imagery on a display was disclosed by Hitoshi

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In re Patent No. 6,347,997 Furukawa in his Japanese patent application, entitled "Pressure-Sensing Switch," that was published as Publication No. 5-87760 on November 26, 1993. Furukawa `760 discloses a video game controller configured to be held in two hands with depressible buttons on the left and right hand sides of the controller as shown in Figure 1 of the publication (reproduced below in Fig. 10)

Fig. 10 ­ Furukawa `760 Video Game Controller With Pressure Sensing Switches Furukawa `760 discloses a button with a dome cap, that it describes as a moving part 30 mounted on a substrate 5 as shown in Fig. 2 of the publication (reproduced below as Fig. 11) (Furukawa `760, Abstract, ¶ 9).

Fig. 11 ­ Furukawa `760 Pressure-Sensitive Variable-Resistance Game Controller Button On the underside of moving part 30, there is a conductive portion 33 whose resistance changes with the pressing force on the button. (Id. at ¶ 10.) When the button is pressed, the moving part 30 comes into electrical contact with fixed contacts 7 and 7 of a wiring pattern

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In re Patent No. 6,347,997 on the substrate 5. (Id. at ¶ 9.) Due to the pressure-sensitive characteristics of the conductive part 33, varying the pressing force on the button will vary the electrical resistance through conductive part 33 between fixed contacts 7 and 7, thereby generating variable electrical output in response to varying physical pressure on the video game button. (Id. at ¶¶ 9-10.) It is generally known--and applicant previously admitted--that the dome cap structures used in most existing game controllers produce break-over threshold tactile feedback: "Elastomeric injection molded dome-cap momentary-On switches (sensors) are well known and widely used in the prior art as switches incorporated in such common host devices as . . . electronic game control devices such as game pads for Nintendo, Sony and Sega game consoles . . . most but not all elastomeric injection molded dome caps when depressed produce a soft snap which is a user discernable tactile feedback. This tactile feedback occurs when the dome-cap is depressed beyond a given point; the point being where a mechanical threshold is crossed and the tactile snap is produced." (Exhibit 22, U.S. Pat. No. 6,135,886 to Brad A. Armstrong (hereinafter, the "`886 Patent"), Col. 1, lines 20-25, 58-64.)3 Furukawa `760 describes employing its pressure-sensitive variable conductance switch in existing prior art game controllers. Given applicant's admission regarding the tactile feedback function of the dome caps that already existed in these controllers, the dome

The `886 Patent is a continuation-in-part of the same parent application to which the `997 Patent claims priority, and is the subject of a terminal disclaimer in the `997 Patent (see Exhibit 14).

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In re Patent No. 6,347,997 cap of Furukawa `760 would implicitly produce a break-over threshold tactile snap to the finger of the user pressing a button on a video game controller. As Furukawa `760 describes, the variable output based on variable pressure applied to a button on a video game controller can be used, for example, to change the speed of a character's movement on a display, according to the amount of pressure applied to the button. (Furukawa `760, ¶ 10.) The example embodiment described in Furukawa `760 discloses a cross shaped key (the buttons configured in a north-south-east-west orientation) as having variable control. (Id. at ¶ 9, Fig. 11.) However, the specification notes that the invention is not limited to variable control on the buttons of a cross shaped key. (Id.) Indeed, the single claim in Furukawa `760 does not limit the location of the pressure-sensing switch in a video-game controller. (Id., claim 1, pg. 2.) Thus, Furukawa `760 disclosed using a pressure-sensitive variable-resistance switch to control game imagery, coupled with a dome cap structure, over six years before the `997 application was filed 7. The Furukawa `217 Prior Art

In his Japanese patent application, entitled "Pressure-Sensitive Variable Resistor," that was published as Publication No. 5-326217 on December 10, 1993, Hitoshi Furukawa disclosed pressure-sensitive variable-conductance sensors in "keyboards and the like." Similar to Mitchell, supra, Furukawa `217 discloses mixing carbon black and graphite with a silicon rubber and molding it. (Furukawa `217, Abstract) to form a pressure-sensitive variable resistor 1.

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In re Patent No. 6,347,997

Fig. 12 ­ Pressure-Sensitive Variable-Resistance Button Disclosed by Furukawa `217 Furukawa `217 discloses a button with a dome cap, that it describes as a rubber key top 6 mounted on a circuit board 8 as shown in Fig. 4 of the publication (reproduced above as Fig. 12) (Furukawa `217, ¶ 10.) On the underside of the rubber key top 6, there is a pressuresensitive variable resistor 1 whose resistance changes with the pressing force on the button. (Id.) An electro-conductive layer 7 is provided between the pressure-sensitive variable resistor 1 and the rubber key top 6. (Id.)

Fig. 13 ­ An Illustration Showing the Electrical Path Through the Variable-Resistance Pressure-Sensitive Switch In Furukawa `217 When the button is pressed, the pressure-sensitive variable resistor 1 attached to the rubber key top 6 via the electro-conductive layer 7 comes into electrical contact with secure contact points 9 and 10 on circuit board 8, as shown in Fig. 5 of the publication (reproduced above as Fig 13.) (Furukawa `217, ¶ 10.) This electrical contact establishes a circuit

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In re Patent No. 6,347,997 between the secure contact points 9 and 10 via anisotropic electro-conductive paths a and b of the pressure-sensitive variable resistor 1 and the electro-conductive layer 7 above it. (Id.) Due to the pressure-sensitive characteristics of the pressure-sensitive variable resistor 1, varying the pressing force on the button will vary the electrical resistance, thereby generating variable electrical output in response to varying physical pressure on the button. When contact pressure is low, the variable resistor's resistance is high. (Id.) The resistance is reduced as the rubber key top 6 button is pressed down further and contact pressure is increased. (Id.) Furukawa `217 discloses that with additional applied pressure to the button, the contact pressure between carbon powder particles is increased, establishing anisotropic conductivity between the electrodes and the electro conductive layer. (Id. at ¶ 9.) Thus, Furukawa `217 expressly discloses a sensor that changes conductivity based on pressure applied in a given direction. While this change in conductivity is accomplished through the same variable resistance material disclosed in Furukawa `760, Furukawa `217 makes clear that it is teaching variable-conductance based on applied pressure. (Furukawa `217, ¶ 8.) Furukawa `217 further discloses using the pressure-sensitive variable-conductance switch in a computer keyboard to control "scroll rate, cursor moving speed, and character reaction speed in computer games . . . according to the intention of the user." (Id. at ¶ 11.) Because of the way in which computer keyboards are laid out, Furukawa `217 inherently discloses use of a single human finger as an input for this device. Finally, as set forth in the discussion of Furukawa `760, above, applicant admits that most elastomeric injection molded dome caps produce a break-over threshold tactile

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In re Patent No. 6,347,997 feedback to the finger of a user. ('886 Patent, Col. 1, lines 58-64.)4 He further acknowledges that such switches are "well known and widely used in the prior art as switches incorporated in such common host devices as . . . controls for televisions and stereos, and in electronic game control devices such as game pads for Nintendo, Sony and Sega game consoles, and some computer keyboards." (`886 Patent, Col. 1, lines 20 ­ 25.) Furukawa `217 discloses employing its pressure-sensitive variable-conductance switch in the buttons of such devices. Thus, these buttons too would implicitly produce a break-over threshold tactile feedback to the finger of a user. Additionally, Furukawa `217 explicitly discloses that changes in resistance are accompanied by tactile feedback to the user, described as "operational feeling." (Furukawa `217, ¶ 5.) Thus, Furukawa `217 both implicitly and explicitly discloses tactile feedback to the finger of a user. 8. The O'Mara Prior Art

Use of pressure-sensitive variable-conductance material to generate variable analog output from a button on a controller for electronic games was disclosed in U.S. Pat. No. 5,510,812 to Kerry O'Mara et al., entitled "Piezoresistive Input Device," issued on April 23, 1996.

The `886 Patent is a continuation-in-part of the same parent application to which the `997 Patent claims priority, and is the subject of a terminal disclaimer in the `997 Patent (see Exhibit 14). -25-

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In re Patent No. 6,347,997

Fig. 14-Pressure-Sensitive Variable-Conductance Switch Disclosed by O'Mara The O'Mara patent uses the term "piezoresistive" to refer to electrically conductive material with a resistance that varies with the amount of pressure applied--in other words--a pressure-sensitive variable-conductance material. (O'Mara, Col. 3, lines 44-50.) At the time of the O'Mara patent, pressure-sensitive variable-conductance material suitable for use in video game controllers was readily available from commercial suppliers. For example, "force sensitive resistors" were available commercially from Interlink Corp. (Id. at Col. 6, lines 34-42) and "conductive foam" was available from The Fredericks Company. (Id. at Col. 6, lines 42-47.) O'Mara disclosed that a pushbutton on a video game controller could be constructed using pressure-sensitive variable-conductance material, as shown in Figure 6 of the patent (reproduced above in Fig. 14) (Id. at Col. 7, lines 46-50). Such a switch would simply be

constructed utilizing a non-conductive plate or actuator 120, a conductive foam 125 and a base with a plurality of open circuit traces. (Id. at Col. 7, lines 27-35.) The electrical resistance (conversely the conductivity) of the conductive foam 125 varies with the pressure

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In re Patent No. 6,347,997 applied to the plate 120. (Id. at Col. 7, lines 2-9, Col. 7, lines 27-51.)5 The conductive foam thus provides an electrical path that bridges the interleaved open circuit traces 135 in which the conductivity varies with the pressure applied to the plate 125. (Id.) Accordingly, O'Mara disclosed a pressure-sensitive variable-conductance pushbutton for a game controller. (Id.) O'Mara also disclosed a four-way rocker switch utilizing four pressure-sensitive sensors, located in a north-south-east-west orientation. (Id. at Col. 3, lines 10-58.) Pressure applied by a user's fingers to a rocker switch provides improved directional control over prior art rockers. (Id.) Each of the four piezoresistive sensors "provides an analog output related to the magnitude of the force applied to the element." (Id. at Col. 3, lines 50-52.) O'Mara thus disclosed a four-way rocker switch with pressure-sensitive variableconductance sensor to provide directional input to control imagery of a video game that varies with the pressure applied by a fingertip. (Id. at Col. 3, lines 10-58.)

While applicant apparently claimed that the cited prior art (including O'Mara) lacked pressure-sensitive variable-conductance sensors, this is inaccurate. (See Exhibit 16, `997 Prosecution History, May 4, 2001 Interview Summary.) While O'Mara discloses variable resistance rather than variable conductivity, U.S. Patent 5,999,084 to Brad A. Armstrong, to which applicant filed a terminal disclaimer in the `997 Patent, includes a claim disclosing "pressure-sensitive variable-conductance material is variable in terms of electrical resistivity, the electrical resistivity of said pressure-sensitive analog variable-conductance material lowering with received force thereon." (Exhibit 24, U.S. Pat. No. 5,999,084 to Brad A. Armstrong (hereinafter, the "`084 Patent"), Claim 8, Col. 13, lines 36-39.) Thus, variable resistivity is a form of variable conductance. -27-

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In re Patent No. 6,347,997

Fig. 15 ­ Comparison Between O'Mara's Pressure-Sensitive VariableResistance Four-Way Rocker Structure and Similar Structure Claimed In The `997 Patent A comparison between the O'Mara pressure-sensitive variable-conductance button and the `997 Patent pressure-sensitive variable-conductance button (see Fig. 15, above) demonstrates similar structure and functionality between O'Mara (published in 1996) and the `997 Patent (applied for in 2000.) Both have a four-way rocker switch (O'Mara, Col. 3, lines 16 refers to it as a "directional control pad or disk") placed over four separate sets of circuit traces (Compare O'Mara, Fig. 1 with `997 Patent, Fig. 7); both have four separate pressuresensitive variable-conductance elements (compare O'Mara, Figs. 6 and 8 with `997 Patent, Fig. 7) disposed over the four sets of circuit traces (compare O'Mara, Fig. 7 with `997 Patent, Fig. 7.)

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In re Patent No. 6,347,997 Pressure applied to each of the four directions on the rocker switch in both embodiments will cause the pressure-sensitive variable-conductance material to contact circuit traces, creating an electrical connection whose resistance varies with varying pressure. (Compare O'Mara, Col. 3, lines 50 ­ 52 with `997 Patent, Col. 2, lines 5 ­ 8 and Col. 7, lines 52 ­ 55.) Both describe a pressure-sensitive switch in a video game controller with an analog output representational of the amount of pressure applied. In sum, more than a year before the parent application for the `997 Patent was filed, more than four years before the `997 application itself was filed, and before the filing of any application to which priority is allegedly claimed, O'Mara disclosed a video game controller having pressure-sensitive variable-resistance material in buttons and a four-way rocker switch, providing analog output varying in relation to the physical pressure applied by a user's fingers on the switches/buttons. 9. The Padula Prior Art

U.S. Reissue Patent No. Re. 34,095, entitled "Digitizer Stylus with Pressure Transducer," issued to Michael Padula on October 13, 1992 (the original patent issued November 22, 1988). Padula discloses a stylus that uses a pressure-sensitive variableconductance sensor to automatically activate the stylus when its tip is pressed against a digitizer tablet. (Padula, Abstract.) As is shown in Padula's Figure 1, reproduced below, the stylus includes a pen refill 2 in-part within the stylus housing, but having a tip extending through a hole in the nose cap portion 6 of the housing. As shown in Figure 3 below, the opposite end of the pen refill 2 is received by a refill interface plug 12. A plunger 20 is located on the opposite side of the refill interface plug 12 from the pen refill 2, i.e., to the left of the refill interface plug 12 in Figure 3. A force sensitive resistant (FSR) transducer 26 is located to the left of the plunger -29-

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In re Patent No. 6,347,997 20. The FSR transducer includes a pressure-sensitive variable-conductance material with a resistance that decreases as pressure is increased. (Padula, Col. 8, lines 1-12.) Thus, when the tip of the pen refill 2 is pressed against a digitizer pad, it in turn presses against the refill interface plug 12, the plunger 20, and the FSR transducer 26 to vary the resistance of the FSR transducer, and thereby produce a variable output signal. (Padula, Col. 6, lines 26-44; Col. 8, lines 1-18.)

Fig. 16 ­ Padula's Stylus with a Pressure-Sensitive Variable-Conductance Sensor

Fig. 17 ­ Padula's Variable-Resistance Sensor Padula also refers to Figure 12 therein (reproduced below) to describe an embodiment that includes a snap-through dome cap located between the refill interface plug 12 and the plunger 20 to provide the user with a tactile feedback when the sensor is activated:

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In re Patent No. 6,347,997 FIG. 12 indicates another embodiment of a pressure transducer in which a layer 100 of flexible material, for example, a thin sheet of silver or other metal, formed with a dome 102 is positioned between, for example, the refill interface plug 12 and the plunger 20. The dome 102 is surrounded by a planar annular portion 106 which is seated on the radial end face of refill interface plug 12. When a predetermined pressing force is applied to the dome by refill interface plug 12 and plunger 20, the dome undergoes reversible collapse. The metal dome is designed so that the collapse of the bubble takes place at a pressure which is substantially equal to the pressure at which the processing of data from the stylus is enabled, as previously described. The snap action during collapse of the dome can be sensed by the stylus user, providing a definite tactile feedback indicating to the user that the digitizing apparatus has switched from the disabled state to the enabled state. When pressure is removed from the stylus tip, the dome snaps back to its original undeformed state, ready for the next operation. (Padula, Col. 9, lines 12-32, emphasis added.)

Fig. 18 ­ Padula's Metallic Snap-Through Dome Cap Thus, Padula disclosed a pressure-sensitive variable-conductance sensor with snapthrough metallic dome cap to provide tactile feedback years before the `997 Patent was filed.

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In re Patent No. 6,347,997 10. The Mitsuhashi Prior Art

U.S. Pat. No. 4,766,271, entitled "Elastomer-Made Push Button Switch Covering Member," issued to Masayuki Mitsuhashi et al. on August 23, 1988. Mitsuhashi discloses that a metallic dome cap may be used within an operating switch to provide tactile feedback upon actuation of the switch. 11. The Himoto Prior Art

European Patent Application No. EP 0 835 676 A1, entitled "Multidirectional Operating Switch and Multidirectional Operating Apparatus Using the Same," was filed by Atsunori Himoto et al. on February 21, 1997 and was published on April 15, 1998. Himoto discloses providing vibration feedback to the user of a video game through the video game controller, in order to provide a more realistic gaming experience. 12. The Thorner Prior Art

U.S. Pat. No. 5,669,818, entitled "Seat-Based Tactile Sensation Generator," issued to Craig Thorner et al. on September 23, 1997. Thorner discloses utilizing a motor and shaft with an offset weight attached thereto as a system for providing vibration tactile feedback to the user of a video game. D. The References Alone And In Combination Raise Substantial New Questions Of Patentability 1. The Majority Of The References In This Request Were Either Uncited Or Not Relied Upon By The Examiner

Matsumoto, Kawashima, Furukawa `217, Padula, Mitsuhashi, Himoto and Thorner were neither cited in the record by the Examiner nor cited by applicant during prosecution of the `997 Patent application. While Kramer and Furukawa `760 were cited in the record, they were not relied on by the Examiner, and it is not clear to what extent the Examiner considered them. -32-

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In re Patent No. 6,347,997 The Patent Office did consider and rely on Inoue as part of an obviousness analysis in initially rejecting the parent application to the `997 Patent. However, Inoue was neither relied upon in the context of the other references in this Request during prosecution of the parent application, nor was it cited during prosecution of the `997 Patent application. The Examiner did rely on O'Mara in view of various references not included in this Request in rejecting all of applicant's original claims in the `997 Patent for obviousness. However, those claims were all cancelled by applicant. It is not clear to what extent the Examiner considered O'Mara for its features as a pressure-sensitive variable-conductance analog sensor after applicant claimed following the Examiner's initial rejection of applicant's claims that the prior art lacked for pressure-sensitive variable-conductance analog sensors. (See Section III.B.2., above.) 2. The Prior Art (Both Cited And Uncited) Discloses Those Features Applicant Claimed Constituted His Invention a) The Very Art The Examiner Cited In Rejecting Applicant's Original Claims Disclosed The "Pressure-Sensitive Variable Conductance" Feature Applicant Apparently Indicated the Prior Art Lacked

O'Mara, which was cited by the Examiner in his rejection of all of applicant's original claims, specifically discloses pressure-sensitive variable-conductance controls. As acknowledged by the Examiner, O'Mara discloses "controlling data on a screen (including game data) . . . generating a signal for a display device, the signal being proportional to the pressure applied." (Exhibit 15, `997 Prosecution History, March 15, 2001 Office Action Summary, pg. 5.) The method by which O'Mara generates a signal for a display device, and thus controls data on a screen, is through the use of piezoresistive (variable resistance) materials to vary imagery based on analog output relating to the pressure applied to a button or other input device through a single finger of a user. (O'Mara, Col. 2, lines 27-42.) -33-

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In re Patent No. 6,347,997 Similarly, Furukawa `760 and Kramer, cited by applicant but not relied upon by the Examiner, disclose the very variable-conductance controls the applicant indicated were lacking in the prior art and on the basis of which the Examiner granted the patent. Additionally, several other references, including Matsumoto, Kawashima, and Furukawa `217 disclose this same feature. This demonstrates that the prior art did not lack for pressuresensitive variable-conductance analog sensor controls at the time Mr. Armstrong filed the application underlying the `997 Patent. b) Numerous Prior Art References Disclose Tactile Feedback Associated With A Pressure-Sensitive Variable-Conductance Analog Sensor, The Other Feature Or Combination Applicant Claimed Was Novel

In seeking to respond to Examiner's statement that the `997 Patent's claim 54 (and therefore its dependents) lacked for patentable material, applicant claimed that the prior art did not include "the claimed tactile feedback." To the contrary, numerous references cited to the Examiner included this tactile feedback in a pressure-sensitive variable-conductance sensor, including O'Mara, Furukawa `760, and Kramer. Uncited references Furukawa `217, Matsumoto and Padula similarly disclose such tactile feedback. In fact, the applicant himself admitted that tactile feedback existed in prior art game controllers: In the specification for the `886 Patent, for which applicant filed a terminal disclaimer during prosecution of the `997 patent, applicant admits that "most but not all elastomeric injection molded dome caps when depressed produce a soft snap which is a user discernable tactile feedback. This tactile feedback occurs when the dome-cap is depressed beyond a given point; the point being where a mechanical threshold is crossed and the tactile snap is produced." (`886 Patent, Col. 1, lines 58-64.)

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In re Patent No. 6,347,997 The prior art references contained herein, coupled with applicant's own admissions, demonstrate the presence of pressure-sensitive variable-conductance game controllers offering tactile feedback in the art at the time that applicant claimed that this combination constituted his invention. Additionally, means for providing active tactile feedback, other than rubber elastomeric dome caps to users in video games, either through the use of metallic dome caps, or through vibration means such as a motor and offset weight, was previously disclosed in the Mitsuhashi, Himoto and Thorner references. c) The Furukawa `760 Reference Has Already Formed The Basis For A Final Rejection Of Claims Similar To Those In The `997 Patent, Which Were Subsequently Abandoned by Applicant

While Furukawa `760 was never relied upon during prosecution of the `997 Patent application, it was later considered by the Patent Office in rejecting claims similar to those found in the `997 Patent. On December 21, 2001, Mr. Armstrong filed U.S. Utility Appl. Num. 10/028,071 (the "`071 Application"), a continuation in-part application claiming priority for common matter to the `802 Patent application, the same application to which the `997 Patent claims priority. In Office Actions dated March 11, 2002 and October 31, 2002, the latter constituting a final rejection, the Examiner cited Furukawa `760, along with other references as rendering obvious numerous claims in that patent which were similar to those contained in the `802 Patent. Specifically, Examiner found that "[Furukawa] discloses a pressure-sensitive analog sensor that produces a signal proportional to the pressure applied to the sensor." (Exhibit 25, `071 Application, March 11, 2002 Office Action, p. 3.) Subsequently, applicant abandoned the `071 application.

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In re Patent No. 6,347,997 3. Applicant's Priority Claims Are Improper As To Claims 32 through 37 - The Only Claims Addressed In This Request a) Applicant Is Not Entitled To Claim Priority To The `802 Patent For "Tactile Feedback"

The `997 Patent claims priority to the `802 Patent application as a continuation-inpart. Without acknowledging that the `997 Patent is entitled to claim priority for any of its claims, at least claims 32-37 are not entitled to claim priority to the `802 Patent application, because they are not "supported" by the earlier application in the manner required by 35 U.S.C. §§ 112 and 120. Claim 32 and its dependent claims 33 through 37 of the `997 Patent require "means for providing tactile feedback to the finger." (`997 Patent, Col. 14, line 33.) The `802 Patent application makes no mention of tactile feedback and does not specifically disclose any means for providing tactile feedback to the finger. For at least this reason, claims 32-37 (the only claims forming the subject of this reexamination) are not entitled to claim priority to the `802 Patent. Therefore, while the majority of prior art cited in this request would qualify as prior art regardless of any priority claim, even those few patents (namely the Himoto and Thorner references) which were issued after the `802 Patent application was filed will not be disqualified as prior art on the basis of the `802 Patent's filing date, because claims 32-37 are not entitled to claim priority to the `802 Patent.

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In re Patent No. 6,347,997 b) Applicant Also Is Not Entitled To Claim Priority To The `5256 Patent For "Active Tactile Feedback"

Applicant also claims priority to and incorporates by reference the `525 Patent for its discussion of "pressure-sensitive analog sensors with break-over and active tactile feedback and the like described therein." (`997 patent, Col. 5, lines 6-9.) Applicant includes "means for active tactile feedback" as a specific limitation in claims 34 and 36 of the `997 Patent. However, a detailed review of the `525 Patent reveals no disclosure of a specific means for providing active tactile feedback sufficient to support such a claim limitation pursuant to 35 U.S.C. § 112. Therefore, for at least claims 34 and 36, Applicant is not entitled to claim priority to the `525 Patent, or to any priority date before May 10, 2000, the date the `997 patent application was filed. Therefore, the Himoto and Thorner references, despite being published after the date that the `525 Patent application was filed, are nonetheless prior art for claims 34 and 36, as applicant is not entitled to claim the `525 Patent application's priority date for at least these claims. Indeed, claims 34 and 36 are not entitled to any priority date before May 10, 2000, the date that the `997 Patent application was filed. For this reason, the Himoto and Thorner references may be used as 102(b) references against at least the `997 Patent's claims 34 and 36. c) All Prior Art Cited In This Request Predates The Applications Forming The Basis For Applicant's Remaining Priority Claims

Applicant also attempts to claim priority to a number of other provisional and nonprovisional patent applications. However, the earliest of these (other than those mentioned

6

Enclosed is U. S. Patent No. 6,222,525 to Brad A. Armstrong as Exhibit 23.

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In re Patent No. 6,347,997 above) was filed on October 6, 1998, and postdates the latest prior art reference cited in this request. For this reason, none of applicant's alleged claims of priority would be early enough to avoid any of the prior art cited in this request. 4. The References Alone, And In Combination, Raise Substantial Questions Of Patentability Under Sections 102 and 103

The Matsumoto, Kawashima, Kramer, Inoue, Furukawa `760, Furukawa `217, O'Mara, Mitsuhashi and Padula references were each published before the filing of any patent application to which the `997 Patent claims priority. The remaining references were issued or published more than one year before the `997 patent application was filed. Furukawa `760, Furukawa `217, Matsumoto, Kawashima, Kramer and O'Mara each disclose the use of pressure-sensitive variable-conductance analog sensors to generate a varying analog electrical signal in proportion to the pressure applied. Furukawa `760, Kawashima and O'Mara specifically disclose the use of this pressure-sensitive variableconductance sensor technology in video game controllers, while Furukawa `217 and Kramer more generically describe its use in a remote keyboard for an electronic entertainment appliance. Each of these could be considered a "device for controlling imagery." Additionally, Matsumoto, Kramer, Furukawa `760, Furukawa `217, O'Mara and Padula all disclose pressure-sensitive variable conductance switches and/or sensors with structures that either are explicitly given as providing tactile feedback or would inherently provide tactile feedback to the user. Four of the above six references disclose employing this structure in a game controller or related entertainment electronics device. Additional references, including Mitsuhashi, Himoto, and Thorner, disclose alternative means for providing tactile feedback which might be considered active tactile feedback.

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In re Patent No. 6,347,997 As set forth above, and explained in more detail below, these features applicant claimed were novel aspects of his alleged invention were all well-known in the art by the time that the later-filed `997 Patent claimed a device for controlling imagery with pressuresensitive variable-conductance sensors. Accordingly, a reasonable Examiner would consider these references important in determining patentability of the `997 Patent claims. As shown in more detail below, the Matsumoto, Kawashima, Kramer, Inoue, Furukawa `760, Furukawa `217, O'Mara, Padula, Mitsuhashi, Himoto and Thorner references render claims 32 through 37 of the `997 patent invalid under sections 102 and 103. IV. THE REFERENCES AS APPLIED TO `997 PATENT CLAIMS 32-37 RAISE SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY

The Matsumoto, Kawashima, Kramer, Inoue, Furukawa `760, Furukawa `217, and O'Mara references raise substantial new questions of patentability for claims 32-37 of the `997 patent for the reasons identified in the following sections, and in the appendices referenced therein. A. Rejections Under 35 U.S.C. 102(b)7

The following is a quotation of 35 U.S.C. § 102(b), which forms the basis for all anticipation rejections: A person shall be entitled to a patent unless . . . . (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States . . . . 1. Furukawa `760

Claims 32-37 of the `997 Patent are anticipated by Furukawa `760. Furukawa `760 discloses a device for controlling video game imagery with multiple pressure-sensitive

7

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In re Patent No. 6,347,997 variable-conductance analog sensors connected to circuitry which reads varying analog values from the sensors and causes representative varying of imagery. The pressure-sensitive variable resistance device comprises a dome cap button which is capable of providing tactile feedback to the finger. Furukawa `760 discloses that the use of these buttons is not limited to any particular location, and claims the use of such a pressure-sensitive button in any location. A claim chart that provides the specific applicability of Furukawa