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

Doc. 94 Att. 10

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EXHIBIT 10

Dockets.Justia.com

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1

Commissioner of Patents Box CPA Washington, D. C. 20231 By Express Mail No.

I

PRELIMINARY AMENDMENT Re: Patent Application of Brad A. Armstrong Filed: 07/05/96

Serial No.: Title:

IMAGE CONTROLLERS AND SENSORS (as Amended) address: Brad A. Armstrong P.O. Box 1419 Paradise, CA 95967 Art Unit:
2775

Patent Examiner: Brier, J.

CPA IN RESPONSE TO THE OUTSTANDING OFFICE ACTION OF 03/13/00

Sir: ATTACHMENTS A return receipt postcard. A request for making the application a 37 C.F.R. continuation CPA and the filing fee are attached. Supplemental Declaration for Patent Application (Rule 1.63). Small entity declaration for Inventor. Small entity declaration for Assignee small business. attached. A certificate of Express Mailing A Petition for Extension of Time under 37 CFR 1.136 and the fee for TWO additional months is hereto attached. REMARKS responsive to the Office Action mailed 03/13/00, This paper 13, regarding the above specified application. Please amend the above specified application as herein requested and reexamine the amended application in view of the remarks.

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2

The entire Detailed Action of the 03/13/00, which was made final, has been carefully read, including points 1-7. On 07/31/00 Applicant spoke with Examiner Brier, J. by U.S. Patent No. telephone mainly regarding the prior art of 5,687,080 and Yoshida et al, U.S. Patent No. 5,250,930 regarding claims 19-22. Agreement as to of the claims as currently written was not reached, but the Examiner indicated that while a new search would be needed, he thought that a sheet connecting both buttons and multi-axes joystick would be allowable, claimed. The Examiner agreed that Yoshida having a joystick internally connected with individual electrical wires (see Yoshida and column 7 lines 9-11) expensive high volume compared to Applicant's sheet connected buttons and multi-axes input devices. The Examiner further agreed, that pending a search, the sheet integration of multi-axes input devices and a plurality of buttons was likely allowable. The above a summary of the telephone view to Applicant's best recollection. Under amendments, claims 19-37 will be cancelled, and new claims inserted and submitted as allowable. AMENDMENTS In the specification: Applicant wishes to amend the specification to claim the 35 U.S.C. 120 priority benefit of earlier U . S . application 847,619 which was pending when the instant application was filed, addition to application 393,459 already claimed on page 1. Therefore, please insert the following into page 1 of the specification below the title and above BACKGROUND OF THE INVENTION: the benefits of the earlier filing under 35 of U.S. Patent application Serial No.
847,619 filed March 92, now U.S. Patent

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3

In order that t h e tle reflect t h e current claimed invention, please amend t h e title of t h e application t o read: --IMAGE CONTROLLERS WITH SHEET CONNECTED SENSORS--

Amendments t o t h e claims: Please insert into the claims section and examine t h e following new claims 38-60.
I -

*

iated sensors, said input member finger depressible buttons with associated sensors; and at least one connecting, at least in member, and said at least one least in part, to t h e sensors ; said at least one sheet

having

s located on said at least one e traces electrically d input member, and said ctrically connecting with the

An image ler a c ding t o claim 3 9 which at 1 buttons structured with a least one of t h e finger d e
40.

resilient dome cap.
41.

An image controlle according t o claim 40 which said resilient dome cap is structu ed t o provide a tactile feedback t o a human hand.

-\"

claim 3 8

which said

eneration device.

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4

42.

An

a plunger is

comprising a no

ler according to claim 41 which ove said dome cap, said plunger e rigid plastic material. to claim 41 in which essible buttons associated whereby depression of essible buttons provides a level of depressive pressure

applied. ler according to claim a flexible a rigid circuit
45. An image said plurality of number, at least
1-9.
43

in which said

to

according to claim 4 3 which buttons are at least in represent keys for numbers

An image controller according to which said plurality of finger depressible buttons are at least 4 0 number, at least some of said buttons represent keys for the alphabet, and at least one of said buttons represents a spacebar. in which An image controller according to claim said input member is operable on at least six axes.
48.

An

comprising: on at least two axes, said input buttons, said finger sensors; and

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5

at least one s et connecting to the sensors of said input member, and said at ast one sheet connecting to the sensors of said finger buttons.
49. An at least one sh traces engaging

r according to claim 4 8 in which said electrically conductive traces, said

r according to claim 4 9 which at buttons is structured with a resilient dome cap. r according to claim 50 which said a tactile feedback to a human hand. cording to claim 51 which against said dome cap. cording to claim 51 which said

claim 53 which said depressible buttons associated with at least one of t variable sensor, whereby depression of said a pressure-sensit at least one of the ons provides a the level of depressive pressure proportional signal applied. claim 53 which buttons are at least 10 in sent keys for numbers

said plurality of finger
1-9.

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6

An image controller according to claim in which said plurality of finger depressible buttons are at least 4 0 in number, at least some of said buttons represent keys for the alphabet, and at least one of said buttons represents a spacebar. An image controller according to claim in which said input member is operable on at least six axes. An image controller according to claim in which said input member is operable on at least six axes. An image controller according to claim which said at least one of the finger depressible buttons associated with a pressure-sensitive variable sensor, whereby depression of said at least one of the finger depressible buttons provides a proportional signal representing the level of depressive pressure applied.
60. An image c a plurality of ger depressible buttons, said finger depressible buttons at least one sh e sensors; and at least one of a body; o said body and at least two c in-part within said bod a depressible nd in-part exposed external to a resilient snap-thro dome-cap positioned within said body and depressible with ce from said plunger applied to said dome-cap to cause s d create a tactile feedback; ti pressure-sensi within said body and positione nt electrically

P

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7

between said two for receiving for conductivity of s material is alter output of said se
-

ive tang elements, and further positioned to said dome-cap, whereby electrical ssure-sensitive variable-conductance tive to received force and electrical

REMARKS

No new matter has been added via this amendment.

the originally The claim language is fully supported filed specification. Applicant acknowledges and appreciates that Examiner Brier an examiner with a great deal of experience and familiarity with the procedures and rules of the Patent Office. Applicant relies on the knowledge of the Constitution of the United States of America, wherein the founding Fathers set-forth Authors and Inventors the Exclusive Right to Their Respective Article I, Section 8 , thus establishing Writings and the purpose upon which the U.S. Patent Office founded. New claims 38-60 are believed novel and inventive over the prior art, and thus allowable within the rules of the Patent Office and the spirit of the Constitution of the United States of America. Allowance of the new claims is very respectfully requested.

I hereby declare and swear that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these 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

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8

jeopardize t h e validity of t h e application or any patent issued thereon. Respectfully;

Brad A. Armstrong,

Applicant

CERTIFICATE OF EXPRESS MAILING Assistant Commissioner for Patents Washington, D. C. 20231
I hereby certify that t h i s correspondence being deposited with t h e United States Postal Service as EXPRESS MAIL article with sufficient postage pre-paid a n envelope addressed to: Assistant Commissioner of Patents, Washington, DC 20231, on this

date: August 4, 2000

Brad A. Armstr

ntor

Applicant

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OF EXPRESS MAILING

Assistant Commissioner for Patents Box CPA Washington, D. C. 2 0 2 3 1

I hereby certify that this correspondence being deposited with the United States Postal Service as EXPRESS MAIL POST OFFICE TO ADDRESSEE, mail article with sufficient postage pre-paid an envelope addressed to: Assistant Commissioner of Patents, Box CPA, Washington, DC 20231, on this

A. Armstrong,

Applicant

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Attorney Docket Number

SUPPLEMENTAL DECLARATION FOR UTILITY OR DESIGN PATENT APPLICATION (37 CFR 1.63)

First Named Inventor

Brad A
08
I

. Armstrong

COMPLETE I KNO W N F
Application Number Filing Date Group Art Unit Examiner Name

07/05/96
Brier,

As a below named Inventor, I hereby declare
My residence, post offce address, and citizenship

as stated below next to my name.

k attached hereto
OR
on Application Number as United

77

and was amended on amendment filed application, above identified for such invention.

hereby that the subject matter of the attached amendment part of my or our invention and was invented before the date of the

hereby state that have reviewed and understand the contents of the above identified specification, including the claims, as amended by any mendment specifically referred to above. acknowledge the duty lo disclose information whch I material s

as defined in

CFR

hereby daim foreign priority benefits under U.S.C. 11 or of any foreign for patent or or 65 (a) of any international a p p l i i t b n designated at least one country other than the United States of listed and box. any foreign a p p l i i t b n for patent or inventor's certificate, or of any PCT international application ave also identified below, by a filing date before that of the application on which priority is
I
I

I

I

Application
Country

Date

Copy

Not

YES

NO

Application

Filing Date

Additional provisional application numbers are listed on a supplemental data sheet attached hereto.

Burden Hour Statement: This form estimated to take 0.4 hours to complete. Time vary depending upon the needs of individual case. A n y Officer, Patent and Trademark comments on the amount of time you are required to complete this form should be sent to the Chief 20231. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Assistant Commissioner for Office, Patents, 20231.

[Page 1 of

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Type a

(+)

this box no are Trademark to to

(12-97)
OMB U.S. DEPARTMENT OF unless

Under the a OMB Control number.

SUPPLEMENTAL DECLARATION -UTILITY OR DESIGN PATENT APPLICATION
hereby the States of States or and the natbnai or under 35 U.S.C. d any or of any lntematbnal appllcatbn bebw and, as the subject matter d of the d thh lntematbnal appllcatbn h manner by the paragraph of 35 U.S.C. 112, I acknowledge the to patentability as defined 37 which became available between the date of the lntematbnal of
the

in the pnor
to

U.S. Parent Application or PCT Parent Number

Parent

Date

Parent Patent Number

02/23/1995
and

03/05/1992

u

5

,

Name

Registration Number

Name

I

I

.

Additional Direct a l l correspondence

named on supplemental

Practitioner lnformatbn sheet

or Bar C o d e Label

I
Name

Brad A.

P.O. Box Paradise,
Country
hereby

State Telephone

I
Fax

95967

that statements made herein d my own knowledge are true and that all statements made on and are to be and further these statements were made the knowledge that fake statements and the made are by fine or or under 18 U.S.C. and that willful false statements may jeopardize the application or any patent issued

Inventor's

Brad A .
Port
Address

Box

Paradise, CA

I n v e n t o r s a r e being named on t h e

supplemental [Page

a t t a c h e d hereto

of

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Patent and
Under the Paperwork Ad

d

am

to

d

(12-97) OMB Approved for use through DEPARTMENT COMMERCE unless OMB

STATEMENT CLAIMING SMALL ENTITY STATUS INVENTOR (27 CFR
Brad A

I
Inventor

Docket Number (Optional)

icant

677.37 8
Filedor Issued:

07/05/96

IMAGE CONTROLLERS A N D SENSORS ( a s Amended)
1

As a below named inventor, Ihereby state that I qualify as an independent inventor as defined in for purposes of paying reduced fees to the Patent and Trademark Office described in:
the specification filed herewith with title as listed above. the application identified above. the patent identified above.

I have not assigned, granted, conveyed, or licensed, and am under no obligation under or law to assign, grant, convey, or license, any rights in the inventionto any person who would notqualify as an inde'pendent inventor under 37 CFR if that person had made the invention, or to any concern which would not Qualifyas a small or a nonprofitorganization under 37 CFR business concern under 37 CFR
Each person, concern,or organizationto which I have assigned, granted, conveyed,or licensed or am under an obligation under contract or law to assign, grant, convey, or license any rights in the invention is listed below:
No such person, concern, or organizationexists

Each such person, concern, or organization is listed below.

Address;

( a Nevada L i m i t e d P a r t n e r s h i p ) South Casino Center 2nd

Las V e g a s , NV
Separate statements arerequired from each named person, concern, or organization having rights to the invention stating their status as small entities. (37 CFR 1.27)
I acknowledge the duty to file, in this application or patent, notification of any change in status resulting in loss of entitlement to small entity status prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longerappropriate.(37 CFR

INVENTOR

NAME OF INVENTOR

Signature of inventor

Signature of inventor

Date

Date

Date

Burden Hour Statement: is estimated to take 0.2 hours to complete. Time depending upon the needs of the on the amount of time you are required to complete this form should be sent to the Chief Patent and Washington, 20231 DO NOT SEND FEES OR COMPLETED FORMS TO MIS ADDRESS. SEND TO: Assistant Commissioner for DC 20231.

Any

Washington,

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the

Act of 1995, no

are required to

Approved for use Patent and Trademark Office: to a of unless

h a

(1-99 OMB COMMERCE OMB

STATEMENT CLAIMING SMALL ENTITY STATUS CFR BUSINESS CONCERN
Applicant,

Docket Number (Optional)

Brad A 07/05/96
I
E

. Arms
A N T ) SENSORS

,

Invent

I hereby state that I am the owner of the small business concern identified below: an official of the small business concern empowered to act on behalf of the

identified below:

( a Nevada L i m i t e d P a r t n e r s h i p )
ADDRESSOFSMALLBUSINESSCONCERN

Las

NV

723 S o u t h

or

I hereby state that the above identified small business concern qualifies as a small business as defined 13 CFR Part 121 for purposes of paying reduced fees to the United States Patent and Trademark Office. Questions related to size standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW, Washington, DC 20416.
I hereby state that rights under contract or law have been conveyed to and remain with the small identified above with regard to the invention described in:
the specification filed herewith with title as listed above. the application identified above. the patent identified above. If the rights held by the above identified small business concern are not exclusive, each organization having rights in the invention must file separate statements as to their status as small to the invention are held by any person, other than the inventor, who would not qualify as an 37 CFR if that person made the invention, or by any concern which would not qualify as a under 37 CFR or a nonprofit organization under 37 CFR Each person, concern, or organization having any rights in the invention is listed below: no such person, concern, or organization exists. each such person, concern, or organization is listed below. conce

under business concern

B r a d A . Armstrong, I n v e n t o r

Separate statements are required from each named person, concern or organization having rights to the invention stating their status as small entities. (37 CFR 1.27) A t t a c h e d

Small e n t i t y statement a t t a c h e d .

I acknowledge the duty to file, in this application or patent, notification of any change in status resulting in loss of entitlement to small entity status prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate. (37 CFR

NAME OF PERSON SIGNING

TITLE OF PERSON IF OTHER THAN OWNER
ADDRESS OF PERSON SIGNATURE
I

General P a r t n e r

Manager
2000

Burden Hour Statement This form is to take 0 2 hours to Time will depending upon the of the individual case Any comments on the of time are re uired to this form be sent to the Officer, Patent and Trademark Washington DC 20231 DO SEND OR C MPLETED F O R M S TO THIS ADDRESS SEND TO for Patents, Washington: DC 20231

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UNITED DEPARTMENT OF COMMERCE Patent and Trademark Office
Address: COMMISSIONER OF PATENTSAND TRADEMARKS 20231 ATTORNEY DOCKETNO.

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

DATE MAILED:

Please find below and/or attached an Office communication concerning this application or proceeding.
Commissioner of Patents and Trademarks

(Rev. 2/95)

G.P.O. 1999 460-693

1- File Copy

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Applicati Art Unit: 2779

Number:

,378

Page 2

DETAILED ACTION
Continued Prosecution Application

The request filed on 08/04/2000 for a Continued Prosecution Application (CPA) under 37 CFR based on parent Application No. is acceptable and a

CPA has been established. An action on the CPA follows.

Response to Amendment

2.

The amendment filed on 08/04/2000 has been entered.

Priority
3.

This application repeats a substantial portion of prior Application No.
filed March 05, 1992, and adds and claims additional disclosure not

presented in the prior application. Since this application names an inventor or inventors named in the prior application, it may constitute a continuation-in-part of the prior application rather than a continuation. MPEP 201.08. The same applies to In the preliminary amendment filed on 09/23/96 applicant deleted reference to Now at page 2 of applicants 08/04/2000 amendment applicant states that an additional application is being claimed in "addition to application 393,459 already claimed on page 1 of the specification". Thus, if applicant wishes to claim benefit to 393,459 then applicant will have to add this application back to the specification. Applicant may wish to rewrite his claim to priority as "This application is a in-part of U.S. Patent Application Serial No. filed on March 5, 1992, now

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Number: 081677,378 Art Unit: 2779

Page 3

U.S. Patent No. 5,589,828 and this application is a continuation-in-part of U.S. Patent Application Serial No. 5,565,891.". filed on February 23, 1995, now U.S. Patent No.

Drawings 4.

Figures 37 and 38 should be designated by a legend such as --Prior Art-Page 38 line 32

because only that which is old i s illustrated. See MPEP §

and page 39 line 16 describes figures 37 and 38 as typical sensor packages.

Claim Rejections 35 U S C
5.

The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that

form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs and (4) of section of this title before the invention thereof by the applicant for patent.

6.

Claim 60 is rejected under 35 U.S.C.

as being anticipated by applicants

admission of the prior art. Figure 38 shows and page 39 lines 16-30 describes that which applicant has admitted as being prior art and now claimed in claim 60.

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Number: 081677,378
Art Unit: 2779

Page 4

7.

Claims 38, 39, 48, and 49 are rejected under 35 U.S.C.

as being

anticipated by Brandenburg et

U. S . Patent No. 5,231,386, of record. Base plate 64

(column 9 lines 43 and 44) is a P C board for supporting the pointing device and keyboard keys and it is well known that PC boards has electrical conductive traces. A PC board is a sheet.

8.

Claims 38, 39, 48, and 49 are rejected under 35 U.S.C.

as being

anticipated by Sekine, U. S . Patent No. 5,898,425, newly cited. Column 4 lines 60-62 and column 5 lines 30-33 describes a sheet with conductive traces which are connected
to the keyboard keys and the pointing stick. These claims are written broadly and cover

that which has been made before applicants filing date.

Claim Rejections 35 USC
9. The following is a quotation of 35 U.S.C.

103

which forms the basis for all

obviousness rejections set forth i n this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 o f this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Claims 40-43, 45, 46, 50, 51

and 59 are rejected under 35 U.S.C.

as being unpatentable over Brandenburg et al., U. S . Patent No. 5,231,386, as applied to claims 38, 39, 48, and 49 above, and further in view of applicants admission of the prior art. Brandenburg does not describe how the finger depressible buttons are made. Figure 38 shows and page 39 lines 16-30 describes the finger depressible buttons

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Number: Art Unit: 2779

Page 5

which applicant has admitted as being prior art and is now claiming. It would have been obvious to one of ordinary skill in the art at the time of applicants invention to use the finger depressible buttons of figure 38 in Brandenburg because the pointing device key shown on the front of Brandenburg has the same features that applicant is claiming for the finger depressible buttons. 11. Claims 40-43, 45, 46, 50, 51 and 59 are rejected under 35 U.S.C.

6

as being unpatentable over Sekine, U. S. Patent No. 5,898,425, as applied to claims 38, 39, 48, and 49 above, and further in view of applicants admission of the prior art. Figure
38 shows and page 39 lines 16-30 describes the finger depressible buttons which

applicant has admitted as being prior art and is now claiming. It would have been obvious to one of ordinary skill in the art at the time of applicants invention to use the finger depressible buttons of figure 38 in Sekine because Sekine fails to describe the type of finger depressible buttons used in Sekine's system. Thus, prior art finger depressible buttons are to be used in Sekine's system and figure 38 is a prior art finger depressible button. Claims 47, 57, and 58 are rejected under 35 U.S.C. unpatentable over Brandenburg et as being

U. S. Patent No. 5,231,386, in view of applicants

admission of the prior art ,as applied to claims 46, 55, and 56 above, and further in view of Hoyt et al., U. S. Patent No. 5,687,080, of record. These claims limit the input member as operable on at least six axes. Hoyt teaches that six degree of freedom joysticks are well known. It would have been obvious to one of ordinary skill in the art

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Number: 081677,378
Art Unit: 2779

Page 6

to place a six degree of freedom joystick onto Brandenburg's base plate because a six degree of freedom joystick is more desirable than a three degree of freedom joystick. 13. Claims 47, 57, and 58 are rejected under 35 U.S.C. as b e i n g

unpatentable over Sekine, U. S. Patent No. 5,898,425, in view of applicants admission
of the prior art, as applied to claims 46, 55, and 56 above, and further in view Hoyt et

al., U.

Patent No. 5,687,080, of record. These claims limit the input member as

operable on at least six axes. Hoyt teaches that six degree of freedom joysticks are well known. It would have been obvious to one of ordinary skill in the art to place a six degree of freedom joystick onto Sekine's internal keyboard unit 29 because a six degree of freedom joystick is more desirable than a three degree of freedom joystick.

Allowable Subject Matter
14. Claims 44 and 53 are objected to as being dependent upon a rejected base

claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. 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
15.

or claim

onto a flexible sheet.

Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Jeffery A Brier whose telephone number is (703) 4723. The examiner can normally be reached on M-F from to

If attempts to reach the examiner by telephone are unsuccessful, the examiner`s supervisor, Mark can be reached on [phone]. The fax phone number for

the organization where this application or proceeding is assigned is [phone].

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Number: Art Unit: 2779

Page 7

Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is (703) 3800.
J ffery A Brier

Examiner Art Unit 2779

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Notice of References Cited

081677,378

Under Reexamination ARMSTRONG, E ?ADA. Art Unit Page 1 of 1
2779
DOCUMENT SOURCE

Examiner

Jeffery A Brier
U.S. PATENT DOCUMENTS

DOCUMENT

DOCUMENT NO.

DATE

COUNTRY

NAME

CLASS

SUBCLASS

.

APS

OTHER

U

X
of this reference is not being furnished with this Office action. (See Manual of Patent Examining Procedure, Section any electronic search text, image. and Commercial Databases.
U S.

and Trademark Office

PTO-892 (Rev. 03-98)

Notice of References Cited

Part of Paper No. 20

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948

10-94)

U.S. DEPARTMENT OF COMMERCE - Patent and Trademark Office

Application

OF

PATENT DRAWING

review all originally filed drawings regardless of whether they are designated as formal or informal. Additionally, Examiners will review drawings for compliancewt the regulations. Direct telephone inquiries concerning this review to ih Review Branch,
separatly or properly.

View and enlarged view not not objected to by the Drafts objected to by the Draftsperson under 37 CFR 1.84 or 1.152 as below. The Examiner will require submission of new, corrected when necessary. Corrected drawings must be submitted cording to the instructions on the back of this Notice. 37 CFR Acceptable categories of drawings: ink. Color. Not black solid lines. Color drawings are not acceptable until petition granted. 37 Photographs are not until petition is granted.

Sectional views. 37 CFR 1.84 (h) 3 Hatching not indicated for sectional portions of an object. Cross section not drawn same as view with parts in cross section with regularly spaced parallel oblique strokes. 8. ARRANGEMENT OF VIEWS. 37 CFR Words do not appear on a horizontal, left-to-right fashion when page is either upright or turned so that the top becomes the right side, except for graphs.

9. SCALE. 37 CFR
Scale not large enough to show mechanism with crowding when drawing is reduced in size to two-thirds in reproduction. Indication such as "actual size" or scale 10. CHARACTER OF LINES, NUMBERS, not permitted. LETTERS. 37 CFR

Photographs not properly mounted (must use brystol board or photographic double-weight paper). Poor (half-tone). GRAPHIC FORMS. 37 CFR 1.84 (d) Chemical or mathematical formula not labeled as separate figure. Group of waveforms not presented as a single figure, using common vertical axis with time extending along horizontal axis. Individuals waveform not identified with a separate letter designation adjacent to the vertical axis. TYPE PAPER. 37 CFR Paper not flexible, strong, white, smooth, nonshiny, and durable. Erasures, alterations, overwritings, interlineations, cracks, creases, and folds copy machine marks not accepted. Mylar, paper is not acceptable (too thin). SIZE OF PAPER. 37 CFR Acceptable sizes: by 35.6 cm. (8 U2 by 14 inches) 21.6 21.6 cm. by 33.1 cm. (8 by 13 inches) 21.6 cm. by 27.9 (8 U2 by 11 inches) 21.0 cm. by 29.7 cm. (DIN size A4) All drawing sheets not the same size. Drawing sheet not an acceptable 37 CFR Acceptable margins:
Paoer size

Lines, numbers letters not uniformly thick and well defined, clean, durable, and black (except for color drawings). 11. SHADING. 37 CFR Solid black shading areas not permitted. Shade lines, pale, rough and blurred. 12. NUMBERS, LETTERS, REFERENCE CHARACTERS. 37 CFR

Numbers and reference characters not plain and legible. 37 CFR and reference characters not oriented in same direction as the view. 37 CFR English alphabet not used. 37 Numbers, letters, and reference characters do not measure at least .32 cm. (118 inch) in height. 13. LEAD LINES. 37 CFR Lead lines cross each other. lines missing. 14. NUMBERING OF SHEETS OF DRAWINGS. 37 CFR Sheets not numbered consecutively, and in Arabic numerals, beginning with number 1. 15. NUMBER OF VIEWS. 37 CFR Views not numbered consecutively, and in Arabic numerals, beginning with number 1. View numbers not preceded by the abbreviation Fig. 16. CORRECTIONS. 37 Corrections not made from prior PTO-948. 17. DESIGN DRAWING. 37 CFR 1.152 Surface shading shown not appropriate. Solid black shading not used for color contrast.

35.6 cm. 21.6 cm X 33.1 cm. 21.6 cm. X 21.9 cm. 21 cm. X 29.1 cm. X 14 inches) (8 X 1 3 inches) (8 X 1 1 inches) A4) (2) 2.5 cm. ( 1 " ) 2.5 cm.(1") cm. .64 cm. .64 cm. 2.5 cm. cm. cm. 1.5 cm. cm. cm. 1.0cm.

37 CFR REMINDER: Specification may require revision to drawing changes. All views not grouped together. Views connected by projection lines or lead lines. views. 37 CPR 2

to

COMMENTS:

I

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Assistant Commissioner of Patents Washington, D. C. 20231 By Express Mail article Re: Patent Application of Brad A. Armstrong Filed:
07/05/96

Serial No.: Title:

IMAGE CONTROLLERS WITH SHEET CONNECTED SENSORS (as amended) Brad A. Armstrong
P.O. Box 1419

Applicant's address:

Paradise, CA 95967 Patent Examiner: Brier, J. Art Unit:
2779

IN RESPONSE TO THE OUTSTANDING OFFICE ACTION OF 08/31/00

Sir: REMARKS This is responsive to the Office Action mailed 08/31/00, paper regarding the above specified application wherein claims 38-60 are pending, and 38-43, 45-52, and 54-60 are rejected, and claims 44 and 53 are objected to. A certificate of Express mailing attached.

The consideration of this response, and the reexamination of the application and pending claims in view of this response requested. The entire Detailed Action of the 08/31/00 has been carefully read, including points 1-15.

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2

Point 1 has been read, and it is noted that the CPA acceptable and has been established. Applicant notes that the and filing date are being original application number used reference to the CPA. Point 2 is noted. Point 3 has been read. Applicant will amend, under amendments below, the specification to include the rewritten priority claim as suggested by the Examiner. The Examiner's appreciated. Thank you. suggestion Point 4 has been read. Drawing Figure 37 is prior art and labeled as such in the new substitute formal drawing included also herewith herewith. A Letter to the Official Draftsperson included. Would the Examiner please be so kind as to properly route the substitute drawing so that it is the drawing used for the Patent publication. Thank you. Regarding the issue of Fig. 38. Applicant understands that the Examiner may have perceived Fig. 38 as prior art from reading the first sentence starting on line 16 on page 39, but therein package body meaning Applicant is only describing a the body of the Fig. 38 sensor may use a prior art style body, not meaning that the sensor of Fig. 38 is prior art, rather lines 17-29 assert that Fig, 38 a novel sensor. NOT a prior art figure or device. In the Figure 38 specification, on page 39 lines 17-29, describes the sensor of Fig. 38 as being novel at least due to the inclusion of additional very important (line being a sensitive electrical element (line 20). Applicant does not prior art and in fact states on lines 27-29 admit Fig. 38 believe that integration of pressure sensitive technology into a tactile-snap through sensor package is

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3

Applicant has recently received

Patent o n t h e novel

sensor of Fig. 3 8 , U.S. Patent 5,999,084 issued 7, 1999. A - C o p y of patent 5,999,084 is herewith included for t h e Examiner's convenience. Point 5 is noted.
60 below Point 6 has been read. Applicant will cancel under amendments, but Applicant does not admit claim 60 is not allowable because t h e reasoning d e p e n d s o n t h e sensor being prior art, which it is not reliance of t h e as discussed above in response t o point 4.

Point 7 has been read. Point 8 has been read. Point 9 has been read. Points 10-13 have been read and Applicant again directs the Examiner's attention t o t h e discussion of point 4 above and Fig.
3 8 not being prior art.

Point 14 noting t h e Subject Matter" has been read and understood. The Examiner states: prior art of record d o e s not teach at least two axes or suggest placing an input member movable or claim and finger depressible buttons of claim onto a flexible Accordingly, in the Amendments below, t h e independent claim 38 (once amended) now includes t h e elements of claims and also t h e independent claim 48 (once ^ a m e n d e d ) now includes t h e elements of claims Point 15 has been noted.

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4

In the Aug. 4, 2000 amendment, Applicant stated Remarks that he would cancel claims 19-37, but forgot to formally request noted the cancelation of the claims under Amendments. It Examiner correctly understood Applicant's intention regarding claims 19-37 in his response of 08/31/00 by treating the claims as having been cancelled. For the sake of clarity, Applicant will formally cancel claims 19-37 below under Amendments for the record. Thank you. AMENDMENTS In the Specification: Please rewrite the priority claim in the specification to read: --This application is a continuation-in-part of U . S . Patent Application Serial filed on March 5, 1992, now U.S. Patent No. 5,589,828 and this application is a continuationin-part of U . S . Patent Application Serial No. filed on February 2 3 , 1995, now U . S . Patent No. 5,565,891.--

&\

Amendments to the claims: Please cancel claims 19-37 per the above discussion. The claim amendments will be made by way of underlining that around that which which is being added, and bracketing being deleted. Please amend claim 38 as follows. (once amended) An image controller comprising: an input member with associated sensors, said input member moveable on at least two axes; and a plurality of finger depressible buttons with associated

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sensors; and at least one sheet structurally connecting, at least in part, to the sensors of said input member, and said at least one sheet structurally connecting, at least in part, to the sensors of said finger depressible buttons; said at least one sheet having electrically conductive traces located on said at least one sheet, said electrically conductive traces electrically connecting with the sensors of said input member, and said electrically conductive traces electrically connecting with the sensors of said finger depressible said controller is connected to an device at least one of the depressible buttons structured with a resilient dome cap: said resilient dome cap is structured to provide a tactile feedback to a human hand: a pressure-sensitive variable sensor is the sensor depressible associated with said at least one of the buttons, whereby of said at least one of the depressible buttons provides a proportional sianal representing the level of depressive said at least one sheet is es a flexible membrane sheet connected to circuit board sheet. a

Please cancel claims

39- 44.

Please amend claim 45 to read as follows. (once amended) An image controller according to claim which said plurality of finger depressible buttons are at least 10 in number, at least some of said buttons represent

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6

,

keys for numbers 1-9. Please amend claim 4 8 to read as follows. (once amended) An image controller comprising: an input member movable on at least two axes, said input member having associated sensors; and a plurality of finger depressible buttons, said finger depressible buttons having associated sensors; and at least one sheet connecting to the sensors of said input member, and said at least one sheet connecting to the sensors of said finger depressible buttons; said at least one sheet includes electrically conductive the sensors; traces. said traces at least one of the depressible buttons structured with a resilient dome cap: said resilient dome cap is structured to provide a tactile feedback to a human hand: said at least one sheet comprises a flexible membrane sheet connected to circuit board sheet. a

--

Please cancel claims

_-

,

Please amend claims 54-55 to read as follows. (once amended) An image controller according to claim in which said at least one of the finger depressible buttons is associated with a pressure-sensitive variable sensor, whereby depression of said at least one of the finger depressible buttons provides a proportional signal representing the level of depressive pressure applied. (once amended) An image controller according to which said plurality of finger depressible buttons are number, at least some of said buttons represent at least 1 0

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7

keys for numbers 1-9. Please cancel claim 60.

Please insert the following new claims 61-72 presented for examination and allowance. Thank you. An image controller comprising: an input member with associated sensors, said input member moveable on at least two axes; and a plurality of finger depressible buttons with associated sensors; and at least one sheet connecting to the sensors of said input member, and said at least one sheet connecting to the sensors of said finger depressible buttons; said at least one sheet comprising at least a flexible membrane sheet. An image controller according to claim which at least one of the finger depressible buttons is structured with a resilient dome cap. An image controller according to claim in which said image controller is connected to an image generation device.
4. An image controller according to claim in which said image generation device includes a television based electronic game.

An image controller according to claim which said resilient dome cap is structured to provide a tactile feedback to a human hand. An image controller according to which

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a
a plunger positioned above said dome cap, said plunger comprising a non-conductive rigid plastic material.
k .-

An image controller according to in which associated said at least one of the finger depressible buttons with a pressure-sensitive variable sensor for providing a proportional signal, whereby depression of said at least one of the finger depressible buttons provides a proportional signal representing the level of depressive pressure applied.
67.

An image controller according to claim in which said at least one sheet comprises said flexible membrane sheet connected to a second sheet.

An image controller according to claim second sheet is a circuit board.
70. An image controller according to second sheet a rigid membrane support structure.

in which said

which said

An image controller according to claim in which said at least one sheet comprises said flexible membrane sheet further a rigid membrane supported by a third sheet, said third sheet support structure. An image controller according to which said at least one of the finger depressible buttons associated with a pressure-sensitive variable sensor for providing a proportional signal, whereby depression of said at least one of the finger depressible buttons provides a proportional signal representing the level of depressive pressure applied.

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9
REMARKS

No additional fees are required as t h e total number of independent and dependent claims is now t h e same a s was paid for t h e CPA filing of Aug. 4, 2000. No new matter has been added with t h e now (once amended) claims and no new matter has been added with the newly written claims 61-72. New claims 61-72 are believed t o be within t h e scope of t h e recent CPA prior art search. The claim wording and concepts are fully supported in t h e originally filed specification. Claims 61-72 are allowable over t h e prior art of record for - t h e same reasoning once amended claims 3 8 and 4 8 are allowable. Independent claims 38 and 48 have been amended by inclusion of t h e elements of their respective dependant claims, as suggested by t h e Examiner, (see above response to point 14, Subject Matter"), thus bringing amended claims 38 and 4 8 into proper form for allowance. Allowance of all pending claims is respectfully requested. Thank you.

Respectfully;

/Brad

A.

Inventor

Applicant /Declarant

OF EXPRESS MAILING Assistant Commissioner for Patents Washington, D. C. 20231
I hereby certify that t h i s correspondence being deposited with t h e United States Postal Service as EXPRESS MAIL article with sufficient postage paid a n envelope addressed to: Assistant Commissioner of Patents, Washington, D. C. 20231, on t h i s

date: Sept.
/-

rad A. Armstr

Inventor

Applicant

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ssistant Commissioner for Patents ashington, DC 2 0 2 3 1 Chief Draftsperson Re:
,

Patent Application of

Brad A. Armstrong Filed:
07/05/96

Serial No.: Title:

IMAGE CONTROLLERS WITH SHEET CONNECTED SENSORS (as amended)

Applicant's address:

Brad A. Armstrong P.O. Box 1 4 1 9 Paradise, CA 9 5 9 6 7 Art Unit:
2779

Patent Examiner: Brier, J.

Sir: New formal drawing sheet 32 of 5 0 originally submitted for the above application is enclosed, corrected as required by the associated with Patent Examiner to include the words Fig. 3 7 . The sheet includes only drawing Figs. 3 7 and 3 8 Please substitute this sheet for the corresponding sheet on file. Thank you.

C W T I F I C A T E O F EXPRESS MAILING Assistant Commissioner for Patents Washington, D. C. 2 0 2 3 1 I hereby certify that this correspondence regarding my above referenced patent application is being deposited with the U.S. Postal Service as EXPRESS mail, article with sufficient postage pre-paid in an envelope addressed to: Box fee Amendments, Assistant Commissioner for Patents, Washington, D. C. 2 0 2 3 1 , on this

A. Armstrong,

Applicant

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.

PRIOR ART FIG. 37

600

FIG. 38

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C W T I F I C A T E O F EXPRESS M A I L I N G

Assistant Commissioner for Patents Washington, D. C. 20231

I hereby certify that this correspondence is being deposited the United States Postal Service as EXPRESS M A I L POST O F F I C E TO ADDRESSEE, mail article with sufficient postage an envelope addressed to: Assistant Commissioner of pre-paid Patents, Washington, DC 20231, on this

A. Armstrong

nventor

Applicant

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Application No.

of Allowability

Examiner Jeffery A. Brier

ARMSTRONG, BRAD A. A r t Unit 2672

The MAILING DATE of this communication appears on the cover sheet with the correspondence addressAll being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application. If not included herewith (or previously mailed), a Notice of Allowance and Fee Due or other appropriate communication will be mailed in due course.

2. 3. 4.

This communication is responsive to amendment filed on 09/07/2000. The allowed 38, 54-59,and 67-72renumbered as 1-23 The drawings filed on and 09/07/00(sheet are acceptable. Acknowledgment is made of a claim for foreign priority under 35 U.S.C. of the CERTIFIED copies of the priority documents have been b) Some* c) a) All None received. 2. 3. received in Application No. (Series Code Serial Number). . received in this national stage application from the International Bureau (PCT Rule

5.

* Certified copies not received: . Acknowledgement i s made of a claim for domestic priority under 35 U.S.C.

A SHORTENED STATUTORY PERIOD FOR REPLY to comply with the requirements noted below set to THREE MONTHS FROM THE "DATE MAILED" of this Office Action. Failure to timely comply will result in ABANDONMENT of this application. Extensions of time may be available under the provisions of 37 CFR

6.

Note the attached EXAMINER'S AMENDMENT or NOTICE OF INFORMAL APPLICATION (PTO-152) which gives the oath or declaration is deficient. A SUBSTITUTE OATH OR DECLARATION IS REQUIRED. Applicant MUST submit NEW FORMAL DRAWINGS because the originally tiled drawings were declared by applicant to be informal. including changes required by the Notice of Draftsperson's Patent Drawing Review( PTO-948) attached hereto or 2) to Paper No. including changes required proposed drawing correction filed

why

7.

, which has been approved by the examiner.

including changes required by the attached Examiner's Amendment Comment. Identifying i n d i c i a such as t h e application number (see 37 CFR s h o u l d b e written on t h e reverse s i d e of t h e with a transmittal letter addressed to t h e Official drawings. The drawings s h o u l d be filed as a separate Draftsperson.

8.

Note the attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.

Any reply to this letter should include, in the upper right hand corner, the APPLICATION NUMBER (SERIES CODE SERIAL NUMBER). If applicant has received a Notice of Allowance and Issue Fee Due, the ISSUE BATCH NUMBER and DATE of the NOTICE OF ALLOWANCE should also be included.

I

Notice of References Cited (PTO-892) Notice of Draftperson's Patent Drawing Review (PTO-948) Information Disclosure Statements Paper No. Examiner's Comment Regarding Requirement for Deposit of Biological Material

Notice of Informal Patent Application (PTO-152) Interview Summary Paper . Examiner's Examiner's Statement of Reasons for Allowance Other

I

i

Primary Examiner Art Unit: 2672
S Patsnt and Trademark Office

PTO-37 (Rev. 3-98)

Notice o f Allowability

Part

Paper N o .

.

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rademark Office

NOTICE OF ALLOWANCE AND ISSUE FEE DUE

NE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT. ON THE MERITS IS CLOSED.

HE ISSUE FEE MUST PAID WITHIN SHALL BE REGARDED A

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A . If status is changed, pay twice the amount of the' FEE DUE shown above and notify the Patent Trademark Office of the change in status, or If status is the same, pay the FEE DUE shown . above.

If the

ENTITY is shown as NO:

B. File verified statement o Small Entity Status before, or with, f payment of 1/2 the FEE DUE Shown above.

I

Part B-Issue Fee Transmittal be and returned to the Patent and Trademark Office (PTO) with your FEE. Even if the ISSUE already been paid by charge to deposit account, Part Issue should be completed and returned. If you are charging the ISSUE FEE to your deposit account, section of Part Fee Transmittal should be completed and an extra copy of the form should be submitted. I . All regarding this application must give application number and batch number. Please direct all'communications prior to issuance to Box ISSUE FEE unless advised to the contrary. REMINDER: Utility patents filed on or after 12, may require payment o maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.
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PART B-ISSUE FEE
Complete and mail th fees, to:

Box ISSUE FEE Assistant Commissioner for Patents Washington, D.C. 20231

through 4 Receipt, a new correspondence address; rnaintenaince fee notifications. (b) indicating

Note: The certificate of mailing below can only be used for domestic mailings of the Issue Fee Transmittal. This certificatecannot be used for any other accompanying papers. Eachadditional paper, suchas an assignment or formal drawing, must have its own certificateof mailing.

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UNITED Patent and Trademark Office
Address:
Washington, D.C. 20231

OF COMMERCE

COMMISSIONER OF PATENTSAND TRADEM

PAPER NUMBER

DATE MAILED:

Please find below and/or attached an Office communication concerning this application or proceeding

.

Commissioner of Patents and Trademarks

(Rev. 2/95)
GPO:

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Application No.

ARMSTRONG, BRAD A. Art Unit Jeffery A. Brier 2672

The DATE of this communication appears on the cover sheet with correspondence addressAll claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED i n this application. If not included herewith (or previously mailed), a Notice of Allowance and Fee Due or other appropriate communication will be mailed in due course. THIS OF I S NOT A GRANT OF PATENT RIGHTS. This application is subject t o withdrawal from issue at the initiative of the or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
This communication is responsive to . The allowed as indicated in 22. The drawings filed on are acceptable as formal drawings. Acknowledgment is made of a claim for foreign priority under 35 U.S.C. a) All b) Some* c) None of the: Certified copies of the priority documents have been received. 2.
3.

2. 3. 4.

Certified copies of the priority documents have been received in Application No. . Copies of the certified copies of the priority documents have been received in this national stage applicati n from the International Bureau (PCT Rule

5.

* Certified copies not received: . Acknowledgement is made of a claim for domestic priority under 35 U.S.C.

Applicant has THREE MONTHS FROM THE "MAILING DATE" of this communication to file a reply complying with the requirements below. Failure to timely comply will result in ABANDONMENT of this application. THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.

6.

Note the attached EXAMINER'S AMENDMENT or NOTICE OF INFORMAL APPLICATION (PTO-152) which gives the oath or declaration is deficient. A SUBSTITUTE OATH OR DECLARATION IS REQUIRED. Applicant MUST submit NEW FORMAL DRAWINGS changes required by the Notice of Draftsperson's Patent Drawing Review( PTO-948) attached (a) hereto or 2) (b) to Paper No. including changes required by the proposed drawing correction filed

why

7.

,

which has been approved by the examiner. NO.

including changes required by the attached Examiner's Amendment Comment or i n the Office action of

.

indicia such as the application number (see 37 CFR should be written on the drawings. The drawings be filed as a separate paper with a transmittal letter addressed to the Official Draftsperson.

8.

Note the attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT

BIOLOGICAL MATERIAL.

Any reply t o this letter should include, in the upper right hand corner, the APPLICATION NUMBER (SERIES CODE SERIAL NUMBER). If applicant has received a Notice of Allowance and Issue Fee Due, the ISSUE BATCH NUMBER and DATE o f the NOTICE OF ALLOWANCE should also be included.
Attachment(s)

Notice of References Cited (PTO-892) Notice of Draftperson's Patent Drawing Review (PTO-948) Information Disclosure Statements Paper No. Examiner`s Comment Regarding Requirement for Deposit of Biological Material

Notice of Informal Patent Application (PTO-152) Interview Summary Paper . Examiner's Examiner's Statement of Reasons for Allowance Other

Jeffery A. Brier Primary Examiner Art Unit: 2672
U S Patent and Trademark

PTO-17 (Rev. 9-00)

Notice o f

Part of Paper No. 2 3

.

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Number: Art Unit: 2672 1.

Page 2

An examiner's amendment to the record appears below. Should the changes

and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee. The continuing data found on page 4 of the 09/07/2000 amendment has been amended by the examiner by changing
2.

to

Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Jeffery A Brier whose telephone number is (703) 4723. The examiner can normally be reached on M-F from
to

If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael Razavi, can be reached on [phone]. The fax phone number for the organizatio'n where this application or proceeding is assigned is [phone]. Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number i (703) s 4700.

Primary Examiner Art Unit 2672

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Please type a plus
the Paperwork Reduction Act of

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it displays a valid OMB control number.

U.S.DEPARTMENT OF COMMERCE

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CHANGE OF CORRESPONDENCE ADDRESS
Address to: Assistant Commissioner for Patents Washington, D.C. 20231

Application Number Filing Date First Named Inventor
Group Art Unit Examiner Name Attornev Docket Number

08/67?,

Brad A.
Brier,
J

I
Please change the CorrespondenceAddress for the above-identified application to:
Place Number Bar Code here

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data associated with an existing Customer Number use "Request for Customer Number Data Change"

I am the :

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