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. 9

Case 9:06-cv-00158-RHC

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EXHIBIT 9

Dockets.Justia.com

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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

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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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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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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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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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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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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