Anascape, Ltd v. Microsoft Corp. et al

Filing 94

MICROSOFT'S CLAIM CONSTRUCTION BRIEF IN SUPPORT OF ITS PROPOSED CLAIM CONSTRUCTION FOR THE PATENTS ASSERTED AGAINST BOTH MICROSOFT AND NINTENDO 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)(Jakubek, Joseph)

Anascape, Ltd v. Microsoft Corp. et al

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Case 9:06-cv-00158-RHC

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EXHIBIT 1

Dockets.Justia.com

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oner of Patents and Trademarks Washington, D. C. 20231 Attention Patent Examiner: J. RESPONSIVE TO ACTION Art Unit

Re:

Patent Application o

Brad A. Filed:` 07/05/96

Serial No.: Title:

6 DOF GRAPHIC CONTROLLERS WITH SHEET CONNECTED SENSORS

address:

Brad A. Armstrong P.O. Box 1419 Paradise, CA 95967

IN RESPONSE TO THE OUTSTANDING OFFICE ACTION OF 06/26/98 Sir: REMARKS This is responsive to the Office Action mailed 06/26/98, paper # 8, which is responsive my communication filed April 10, 1998, paper regarding the above specified application. The consideration of this response, and the reconsideration of allowance of the application is requested for the reasons detailed below. Regarding the Office Action Summary: This page has been reviewed, and is noted with dismay that pending claims 1-15 and 19-22 are again rejected and the Action made Final because patent 5,687,080, as described the balance of the Hoyt et paper # 8 , was not set aside as it should have been as shown in paper #7. The effective date of the Hoyt et patent `080 was clearly and properly antedated by the declaration of paper #7.

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Regarding page 1 and point of the Office Action: This has been read and considered. Applicant is very confused as to what was about the filing of the declaration and as to why patent '080 continues to be treated as prior art and used to bar the issuance of patent when it is clearly and properly antedated by the declaration of paper #7. Applicant requests a detailed explanation as to what specifically allegedly made or makes the declaration filing of paper to have been as stated point 1 as stated point 8 page 1 of page #8, and page 5 of paper #8. Such information will be of value should applicant be required to file a continuation application order to further prosecute this application and receive a patent on the invention which a clearly patentable advancement the art. is the considered insufficient by the If examiner to show priority of invention, and the evidence not insufficient to antedate the effective date of the Hoyt et patent, applicant does not believe this constitutes the or filed". Is declaration being this what the examiner means? It is not clear in paper # 8 .
MPEP 715.07 states purpose of filing a 37 CFR 1.131 affidavit (declaration in the present situation) not to demonstrate prior invention, per se, but merely to antedate the Thus, "the conception and effective date of a reduction to practice which must be established under the rule not be the same as what is required in the interference sense of these

The declaration embodied

paper

appears

.. .

.

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accordance with MPEP 715.04; MPEP 715.07 and 37 CFR 1.68 and reference is antedated, and should 1.131, and thus the Hoyt et have been and now should be set aside. The statements pertaining to the swearing behind of Hoyt et above an acknowledgement (in the same document) by declarant that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issued of paper thereon. See page
'080 were made in declaration form in paper

In accordance with 37 CFR 1.68, the declaration of paper is same on which declarant warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issued thereon. Again, see page 4 of paper #7. All of the formal paper #7. requirements for a proper declaration were fulfilled

In reference to the statement on page 1 of paper regarding facts and documentary which also must be accordance with MPEP 715.07; the facts supporting followed priority of invention sufficient to antedate the Hoyt reference were clearly and properly provided, my U . S . patent 5,565,891 filed Feb 23, 1995 and issued Oct. 15, 1996 was and is the showing clear priority of invention by factual evidence, not conclusion. The filing and issue dates of my patent 5,565,891 are provided by the U.S. Patent and Trademark Office and are accurate this case. The filing date of patent was accurately addressed the declaration as being earlier than the earliest applicable date of Hoyt et patent '080. My patent 5,565,891 was filed as a U.S. patent application before

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the effective date of the patent 5,687,080, and was also issued before the issuance of the Hoyt patent. The exhibit, patent 5,565,891 is the evidence specifically addressed the declaration paper and in reading the patent one finds a highly detailed description of a 6 degree of freedom controller having at least enough sensors all mounted on a single plate-like board member 20 which is stated as being a circuit board in one structural arrangement of the invention. The were specifically specific points of fact within patent addressed in paper by stating my patent is shown a multi-axes controller having sensors for 3, 4, 5 and 6 degrees of freedom, the sensors connected by a sheet member. See Figs. 2 and Shown Figs. 2 and 3 and thoroughly structurally as a whole a fully functional described in the patent multi-axis controller with sufficient numbers of sensors all mounted on a single member 20 to convert six degrees of freedom of an input member (trackball 12) relative to a reference member (housing and clearly the member 20 is cooperative interaction with the input member 12 and reference member 10 with sensors mounted on member 20 for converting at least three degrees of freedom into representative electrical outputs. The patent states the fact that member 20 may be a printed circuit board having sensors, integrated and or discrete electronic components thereon..", which is a statement of fact, whether brief or not, the statement of fact is further supported by the drawing Figs. 2 and 3 (and the written description of the Figs.) clearly showing sensors 102, 106, 108, 114, 118 and 120 all mounted or attached to circuit board member 20. Additionally, sensors 124, 126 and 128 are indicated as mounted the Fig. 2 and 3 drawings of patent '891 and on member 20 provide three more degrees of control for a full compliment of 6 -degrees of freedom Would the examiner please note the following from patent col. 11, lines 37-42; prefer, all embodiments of the invention, although is not essential to be within the scope of the

.

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invention, that most all of the circuits, switches and sensors be mounted on the carriage 14, and more particularly the lower member 20, and this being an advantage for maintaining low cost of manufacturing

.

Additionally, the multiple axes physical to electrical converter of the referred to drawing Figs. 2 and 3 of patent '891 also clearly includes resiliency along at least -three mutually perpendicular linear as presently claimed in the instant application, see element 30 in Figs. 2 and 3 of patent '891 and the written description therein for element 30. Additionally, the multiple axes physical to electrical converter of the referred to drawing Figs. 2 and 3 of patent '891 clearly shown in conventional computer 140 Fig. 10 further supporting the claimed invention of claims 19-22 the instant application. A conventional computer keyboard includes at least 40 alpha-numeric keys operable by depression.

The disclosure as a whole in patent '891 factual evidence which does not require conclusion for the antedation of the Hoyt clearly shown and patent. The present claimed invention described, but not claimed, in my earlier patent '891. Furthermore, paper states, and these statements are considered herein again stated or incorporated herein: hereby swear behind, per 37 CFR 1.131, the Hoyt et patent 5,687,080 filed June 20, 1995 and issued Nov. 11, 1997. All criteria for a proper swearing behind per 37 CFR 1.131 has been met, in the five ways noted below, as follows: First, my present invention, in one embodiment, was disclosed but not claimed in my U . S . Patent 5,565,891 filed Feb.

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and issued Oct. 15, 1996. In my patent '891 shown a multi-axes controller having sensors for 3, 4, 5 and 6 degrees of freedom, the sensors connected by a sheet member. See Figs. 2 and 3 both patent `891 and in the present application. The filing date of my patent is prior to the filing date of Hoyt
2 3 , 1995

.

Second, the reference patent, Hoyt, clearly not the same invention as the present invention. Hoyt does not claim the same patentable invention as the present application. Hoyt specifically claims an input apparatus comprising at least a source of magnetic flux and specialized magnetic flux sensitive sensors. The Hoyt invention can clearly be made as claimed without sheet connected sensors. The present invention can clearly be made as claimed without a source of magnetic flux and without specialized magnetic flux sensitive sensors. Hoyt and the present invention are clearly patentably distinct inventions. Third, the present application was filed before publication of my patent `891 and also before publication of the Hoyt patent. The present application has a filing date less than one year after any public disclosure of the claimed invention. Fourth, my claimed invention of the present application, including matter shown but not claimed my earlier patent was invented and reduced to practice here the U . S . Fifth, a copy of my U . S . patent 5,565,891 hereto attached as evidence of fact. In summary, Hoyt not prior art to my present invention. requested the Hoyt patent 5,687,080 be set aside Therefore, and the rejection of the present claims in view of Hoyt, and Hoyt view of et be withdrawn."

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Furthermore, the evidence addressed and specifically relied declaration is not based on upon in the paper but clearly established facts indisputably existing within U.S. Patent 5,565,891. The six degree of freedom controller of patent '891 having enough or a sufficient number of sensors for interpreting 6 DOF all mounted on a single plate-like member 20 such as a printed circuit board is far more than as implied by the examiner on page 2 point 2 of paper #8. It is not vague, and those skilled in the art would have no problem building and using that which is described, and would not have to resort to undue experimentation. The 6 DOF controller is patent `891 as a complete structural, fully described functional and operational arrangement filed in a U.S. patent application and constituting constructive reduction to practice, and this prior to the filing date of the Hoyt et patent `080. Trackball 12 is clearly an input member, housing 10 is clearly a is a plate-like circuit board or reference member, member cooperative interaction with said input member sheet clearly and said reference member, and member 20 clearly connects a full DOF worth of sensors mounted thereon for converting operations of said input member in at least three degrees (six degrees are shown and described) of freedom into representative electrical output signals. This all shown in the drawing Figs. 2 and 3 made specific reference to in the paper 7 declaration, and one would assume the description of the part numbers shown in the referred to drawing figures would be read to fully appreciate the the referred to drawing figures. structures shown Applicant notes the examiner's statement of point 2 page 2 of paper 8 that the statement lines 56-68, col. 11 of patent `891 is not enough information to support the claimed invention comprising a sheet member in cooperative interaction with said input member and said reference member, said sheet member connecting at least a sufficient number of said sensors for converting operations of said input member in at least three

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degrees of freedom into representative electrical output Applicant never stated that the statement lines 56-68, col. 11 of patent '891 is not enough information to support the claimed invention, these are the examiner's words, not Clearly the present invention is fully described but not claimed confused as to what the examiner in my patent '891. Applicant believes is actually disclosed in my patent '891 as a whole and the specific drawing figures referenced in the paper 7 declaration. in the present application defined one manner as circuit board and patent '891 as and a which has mounted thereto all of the sensors required to interpret 6 degrees of freedom of the trackball 12 relative to the reference housing 10. Furthermore, the present member, application also defined in one form of the invention as which again is clearly rigid circuit board as used in defining member 20 of patent '891 which is shown and described as holding enough to interpret 6 degrees of freedom of inputs to trackball 12. Additionally, the disclosure as a whole in patent '891 without question provides enough information to support the claimed invention and provide clear invention patent. priority over the Hoyt et Thus, the Hoyt patent is antedated, and cannot be used as a reference to bar patentability of the present invention, and therefore the rejection grounds based on Hoyt or Hoyt in should be withdrawn, obviating all combination with grounds for rejection and any need for applicant to attack the specific 35 USC 102 and 103 grounds of rejection set forth papers and where Hoyt was used as the primary reference. Since clearly the Hoyt patent '080 was properly sworn behind paper #7, and holding of finality should now be withdrawn, and the application and claims reexamined in view of this response view of paper and the declaration thereof, and all and claims 1-15 and 19-22 found allowable over the prior art of

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record. If, after considering this response, the examiner still believes the declaration of paper improper or inadequate, he may wish to consult with his supervisory examiner on the matter. In reference to page 2 point 2 of paper #8, the examiner application filed on July 5, states states incorrectly, and should state July 5, 1996. The prior art made of record and not relied upon is considered pertinent to disclosure, but not so pertinent as to prevent allowance of the present claims.

I hereby declare that all statements made herein of my knowledge are true and that all statements made on information and belief are believed to be true; and further that statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issued thereon.

Applicant /Declarant MAILING Commissioner of Patents and Trademarks Washington, D. C. 20231 I hereby certify that this correspondence being deposited with the United States Postal Service as EXPRESS MAIL article with sufficient postage paid an envelope addressed to: Commissioner of Patents and Trademarks, Washington, D. C. 20231, on this
OF

nventor

date: