O
`O
`’.
`°
`
`INTELLECTUAL
`PROPERTY OFFICE
`
`Your ref :
`
`B254.001.00
`
`Examiner :
`
`Mr Brendan Donohoe
`
`Application No:
`
`GB 101 1078.1
`
`Tel :
`
`01633 814607
`
`Applicant :
`
`Simon David Burgess
`
`Date of report :
`
`16 May 2011
`
`Latest date for reply:
`
`2 July 2012
`
`Page 1/3
`
`Patents Act 1977
`
`Combined Search and Examination Report under Sections 17 & 18(3)
`
`Novelty
`
`The invention as defined in claims 1-5 is not new because it has already been
`1.
`disclosed in the following documents:
`
`‘FireStorm Dual Power’ gamepad by 'Thrustmaster'. Available around 2002.
`See the 'Thrustmaster USB game controller roundup’ dated 5 April 2002 on ‘Dan's
`Data’ website, available at http://www.dansdata.corn/tmsticks.htm.
`
`‘Run ‘N’ Drive’ wireless gamepad by 'Thrustmaster'. Available since March 2007.
`See the review by Olin Coles dated 08 April 2009 on BenchmarkReviews.com, note
`especially ‘Closer Look’ (page 3 of 4) available at
`http://benchmarkreviews.com/index.php?option=com_content&task=view&id=235&1
`temid=65&limit=1&limitstart=2.
`
`Modified Xbox 360 controller discussed in ‘Rapid Fire Mod For Wireless Xbox 360
`Controller, Step by step tutorial with pictures’ forum on XboX—scene.com.
`See post #341 (dated Jul 8 2008) — post #346 (dated Jul 9 2008) on pages 23 and 24 of
`the thread, referring to modified gamepad by contributor 'Jimakos Sn’, available at
`http://forums.XboX—scene.com/index.php?showtopic=643928&st=330.
`
`WO2008/131249 A1
`
`COE — See whole document, note especially buttons 113, 114 provided on the
`underside of the gamepad.
`
`The above documents are just some of a far larger number relevant to claim 1 at least.
`2.
`Further search will be necessary at a later stage.
`
`FireStorm Dual Power (‘FireStorm’), Run ‘N’ Drive ('RND'), ‘Rapid Fire Mod’ (‘Mod’)
`3.
`and document COE show gamepads having additional buttons provided on the underside and
`each anticipate claim 1.
`
`In ‘Mod’ the gamepad has the buttons as triggers/levers formed separately to the
`4.
`gamepad (claims 2 & 5). ‘Firestorm’ has the buttons positioned vertically on and integral with
`the gamepad (claims 3 & 4).
`
`Intellectual Property Office is an operating name of the Patent Office
`
`www.ipo.gov.uk
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000001
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000001
`
`

`
`-'°.'
`°
`
`INTELLECTUAL
`PROPERTY OFFICE
`
`Your ref :
`Application No :
`
`B254.001.00
`GB 101 1078.1
`
`Date of report:
`Page 2 / 3
`
`16 May 2011
`
`[Examination Report contd.]
`
`Inventive step
`
`It is extremely well known in the art to modify gamepads to suit the requirements of a
`5.
`particular game or gamer. This is prevalent both on a professional basis (as represented by the
`‘Firestorm’ and 'RND' documents), and on an amateur basis (as represented by the ‘Mod’
`document). Indeed, the ‘Mod’ document should be understood as purely representative of a
`thriving ‘modding’ community, in which gamers modify their gamepads on an almost adhoc
`basis according to personal preference.
`
`The features defined in your claims are typical features of gamepad controls/buttons.
`6.
`As evidenced by the documents listed above, the skilled person would consider them as
`nothing more than routine modifications or variations to literally any gamepad. Moreover, the
`skilled person would find it entirely obvious to modify or tailor a given conventional gamepad
`to suit the needs of any individual, and would possess (or have ready access to) the skills and
`knowledge required to do so.
`
`With this in mind, I am having great difficulty seeing anything in your application
`7.
`which could form the basis of a novel and inventive claim. It is noted in this connection that
`
`the above documents disclose the use of additional buttons on the gamepad underside which
`perform the same function as the ‘conventional’ controls, and the use of buttons on the
`underside which provide additional functionality beyond that of the ‘conventional’ controls.
`
`Clarity
`
`It is not entirely clear what is meant by the controls being substantially vertically
`8.
`orientated with respect to the controller (claim 3). It is noted that ‘vertical’ is a relative term. It
`is further noted there is little detail in the description to shed light on this feature. I have taken
`this feature to mean generally that the additional controls are located on a part of the gamepad
`which is substantially perpendicular to the plane of the upper surface of the gamepad.
`
`In addition, it is not entirely clear what the distinction is between the additional
`9.
`controls being integral to the outer case (claim 4) or separate from the outer case (claim 5).
`Again there is little detail in the description to explain this feature. I have taken these features
`as generally defining the distinction between the controls being formed as an original part of
`the gamepad (as in ‘Firestorm’, 'RND' and COE), and the controls being retro—fitted to a
`gamepad (as in 'Mod').
`
`Additional comments regarding the search and relevant prior art
`
`Please note the search is incomplete, and further search will be necessary should your
`10.
`application proceed. Document COE is known from prior knowledge of the art, and no
`specific search has yet been undertaken in the patent literature. I expect the patent literature
`will hold further relevant documents.
`
`Intellectual Property Office is an operating name of the Patent Office
`
`www.ipo.gov.uk
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000002
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000002
`
`

`
`O
`‘.°'-3?3='.'
`°.'..'.°
`
`INTELLECTUAL
`PROPERTY OFFICE
`
`Your ref :
`Application No :
`
`B254.001.00
`GB 101 1078.1
`
`Date of report:
`Page 3 / 3
`
`16 May 2011
`
`[Examination Report contd.]
`
`In addition, the other documents cited are purely representative of a far larger number
`ll.
`available on the internet showing gamepads having controls on the underside. These include
`references to gamepads having several buttons on the underside (relevant for novelty and/or
`inventive step), and references to gamepads having a single button on the underside (relevant
`for inventive step).
`
`It is also possible (if not likely) that other related fields will hold relevant art, such as
`12.
`remote controls for electrical and electronic equipment.
`
`Intellectual Property Office is an operating name of the Patent Office
`
`www.ipo.gov.uk
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000003
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000003
`
`

`
`INTELLECTUAL
`PROPERTY OFFICE
`
`Simon David Burgess
`C/o Serjeants
`25 The Crescent
`King Street
`LEICESTER
`LE1 6RX
`
`Your Reference: B254.001.00
`
`Application No: GB 101 107 8.1
`
`16 May 2011
`
`Dear Mr Burgess
`
`Patents Act 1977:
`
`Patents Directorate
`
`Concept House
`Cardiff Road, Newport
`South Wales, NP10 8QQ
`
`Direct Line: 01633 814607
`
`‘E-Mail: brendan.donohoe@ipo. gov.uk
`Switchboard: 0300 300 2000
`Fax: 01633 817777
`Minicom: 0300 0200 015
`
`DX: 722540/41 Cleppa Park 3
`
`Combined Search and Examination Report under Sections 17 and 18(3)
`
`Latest date for reply:
`
`2 July 2012
`
`Further to your letter of 06 May 2011, I enclose two copies of my search and examination
`report and a copy of the citations.
`
`By the above date you should either file amendments to meet the objections in the report or
`make observations on them. If you do not, the application may be refused.
`
`Online e-filing
`
`You may file such amendments or observations electronically if you wish, using the online
`
`patent filing services detailed in w*ww.i o. ov.ul</ )—a )
`lv—online.
`
`Other search results
`
`If you have applied to another patent office for a patent for this invention you will be
`receiving from them the results of their search. If you decide to proceed with the present
`application you are asked to provide a copy of any such official search report or details of any
`documents cited and category assigned in the report. You may file such information
`
`electronically using the online patent filing services detailed in wv»wv.i_3o.gov'.ul<,_/ —a
`online.
`
`.1 -
`
`
`
`iUse of E-mail:
`Please note that e-mail should be used for correspondence only.
`Disclaimer:
`Please note the documents we send you may be subject to copyright
`PETITIONER VALVE CORPORATION, Ex. 1007
`p. 000004
`
`Intellectual Property Office is an operating name of the Patent Office
`
`www.ipo.gov.uk
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000004
`
`

`
`_3=’:
`
`....°
`
`INTELLECTUAL
`
`PROPERTY OFFICE
`
`Application No : GB1011078.1
`
`Page 2
`
`16 May 2011
`
`Cut—off date This request applies to search reports that you have received before the date
`when you send a response to our first examination report under section 18(3) or section 18(4);
`if you make no response to an initial section 18(4) report the cut—off date is two months after
`the date of that report. Tell us about a search report sooner rather than later if that would
`allow it to be considered during our first examination.
`
`Exceptions You do not have to supply details of a search report that (1) shows a nil response,
`or (2) has been published by WIPO or EPO, or (3) you have already supplied to us on a
`previous GB application.
`
`Publication
`
`I estimate that, provided you have met all the formal requirements, preparations for
`publication of your application will be completed soon after 22 November 2011. At this time
`you will receive a letter confirming the exact date when the preparations for publication will
`be completed. This letter will also tell you the publication number and date of publication of
`your application. However, it should not be relied upon as a reminder if you are intending to
`withdraw your application before publication.
`
`Withdrawal
`
`If you wish to withdraw your application to prevent publication you must withdraw it before
`the preparations for publication are complete. One way that you can withdraw your
`
`application is by emailing withdraw/@‘i o. ?ov.u1«:. Further details on withdrawal are available
`from www.i 3o. ov.uk/ —withdraw.htm.. WARNING — once preparations for publication are
`complete it will NOT be possible to prevent publication.
`
`Amendment
`
`If you wish to file amended claims for inclusion with the published application you must do
`so before the preparations for publication are completed.
`
`Correspondence
`
`If you write to the Office less than 3 weeks before 22 November 2011 please mark your letter
`prominently: "URGENT - PUBLICATION IMMINENT".
`
`Intellectual Property Office is an operating name of the Patent Office
`
`www.ipo.gov.uk
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000005
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000005
`
`

`
`_3=’:
`
`....°
`
`INTELLECTUAL
`
`PROPERTY OFFICE
`
`Application No : GB101 1078.1
`
`Page 3
`
`16 May 201 1
`
`Yours sincerely
`
`Mr Brendan Donohoe
`
`Examiner
`
`Important information about combined search and examination
`
`I also ask that you take note of the following points. These might have a bearing on the future stages of your
`application because the examination report has been sent to you before your application has been published.
`
`(a) You may file voluntary amendments before making a full response to my examination report. We will
`publish with your application any new or amended claims you file voluntarily or as a full response, provided
`that they are received before preparations for publication are completed. It would help us when you file
`amendments before publication if you could prominently indicate in a covering letter whether or not the
`amendments are intended as a full response to the examination report.
`
`(b) If you file a full response to the examination report before your application is published I will consider it as
`soon as possible. However, if this would disrupt the publication of your application, I would have to delay
`taking any action until the application had been published. This delay could be up to 3 months, depending
`upon when we receive your response.
`
`(c) There is another situation when there might be a delay between you filing a full response and the Office
`responding to it. This would arise if you met all my objections but your application had not or had only
`recently been published.
`I could not report the outcome of my re-examination until I was satisfied that the
`search was complete for documents published before the priority date of your invention and that anybody
`interested in the application has had three months following publication of the application to make
`observations on the patentability of your invention.
`
`((1) Provided that the requirements of the Act have been met, I can send your application to grant as early as three
`months after publication. Before doing so I will bring the original search up to date and raise with you any
`further objection that might result from this top-up search. However, there is a possibility that at that time I
`may not have access to all the patent applications published after the priority date of your invention and of
`possible relevance to your application. If this is the case I would have to complete the search after grant and
`if necessary raise any new found novelty objection then.
`
`Intellectual Property Office is an operating name of the Patent Office
`
`www.ipo.gov.uk
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000006
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000006
`
`

`
`Abstract
`
`Games console controller with buttons on underside
`
`Application Number: GB 101 1078.1
`
`A hand held gamepad or controller 10 for a games console (not shown) includes controls 2, 3,
`4, 5 provided on a top surface for operation by the thumbs of a user, and controls 6, 7, 8, 9
`provided on a front, shoulder or bumper surface for operation by the index fingers of the user.
`The back surface or underside of the gamepad includes additional controls ll for operation
`by the middle fingers of the user (see fig. 3). The additional controls ll are preferably paddle
`levers, and are preferably provided on a portion of the gamepad which is perpendicular to the
`plane of the top surface. The additional controls ll may replicate the functions of one or
`more of the controls 2-9 located on the top or bumper surfaces, or may provide functionality
`in addition to those controls.
`
`[Use figures 1&2]
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000007
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000007
`
`

`
`INTELLECTUAL
`PROPERTY OFFICE
`
`Application No:
`
`GB1011078.1
`
`Examiner:
`
`Mr Brendan Donohoe
`
`Claims searched:
`
`All
`
`Date of search:
`
`13 May 2011
`
`Patents Act 1977: Search Report under Section 17
`
`Documents considered to be relevant:
`
`Category
`
`to claims
`
`Identity ofdocument and passage or figure ofparticular relevance
`
`Modified Xbox 360 controller discussed in ‘Rapid Fire Mod For
`Wireless Xbox 360 Controller, Step by step tutorial with pictures’ forum
`on XboX—scene.com.
`
`See post #341 (dated Jul 8 2008) — post #346 (dated Jul 9 2008) on pages 23
`and 24 of the thread, referring to modified gamepad by contributor ‘Jimakos
`Sn‘, available at http://forums.xbox-
`scene.com/index.php?showtopic=643928&st=330.
`
`'FireStorm Dual Power’ gamepad by 'Thrustmaster’. Available around
`2002.
`
`See the 'Thrustmaster USB game controller roundup‘ dated 5 April 2002 on
`‘Dan's Data‘ website, available at http://www.dansdata.com/tmsticks.htm.
`
`‘Run ‘N’ Drive’ wireless gamepad by 'Thrustmaster’. Available since
`March 2007.
`
`See the review by Olin Coles dated 08 April 2009 on BenchmarkReviews.com,
`note especially ‘Closer Look‘ (page 3 of 4) available at
`http://benchmarkreviews.com/index.php?option=com_content&task=view&id=2
`35&ltemid=65&limit=1&limitstart=2.
`
`WO2008/131249 A1
`
`COE — See whole document, note especially buttons 113, 114 provided
`on the underside of the gamepad.
`
`earlier than, the filing date of this application.
`
`Document indicating technological background and/or state
`of the art.
`
`Document published on or after the declared priority date but
`before the filing date of this invention.
`
`Categories:
`Document indicating lack of novelty or inventive
`step
`Document indicating lack of inventive step if
`combined with one or more other documents of
`same category.
`Member of the same patent family
`
`Patent document published on or after, but with priority date
`
`Field of Search:
`Search of GB, EP, WO & US patent documents classified in the following areas of the UKCX 2
`
`Worldwide search of patent documents classified in the following areas of the IPC
`|
`The following online and other databases have been used in the preparation of this search report
`
`Internet keyword search.
`
`Intellectual Property Office is an operating name of the Patent Office
`
`www.ipo.gov.uk
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p.0OO008
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000008
`
`

`
`INTELLECTUAL
`PROPERTY OFFICE
`
`International Classification:
`
`Subclass
`
`A63F
`
`Subgroup
`
`0013/02
`
`Valid From
`
`01/01/2006
`
`Intellectual Property Office is an operating name of the Patent Office
`
`www.ipo.gov.uk
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p.000009
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000009
`
`

`
`_3=’:
`
`....°
`
`INTELLECTUAL
`
`PROPERTY OFFICE
`
`6
`
`Application No:
`
`GB 101 1078.1
`
`Examiner:
`
`Mr Brendan Donohoe
`
`Claims searched:
`
`All
`
`Date of search:
`
`13 May 2011
`
`Patents Act 1977 : Search Report under Section 17
`
`Documents considered to be relevant:
`
`Category
`
`to claims
`
`Identity ofdocument and passage or figure ofparticularrelevance
`
`Modified Xbox 360 controller discussed in ‘Rapid Fire Mod For
`Wireless Xbox 360 Controller, Step by step tutorial with pictures’ forum
`on Xbox—scene.com.
`
`See post #341 (dated Jul 8 2008) — post #346 (dated Jul 9 2008) on pages 23
`and 24 of the thread, referring to modified gamepad by contributor 'Jimakos
`Sn’, available at http://forums.xbox—
`scene.com/index.php?showtopic=643928&st=330.
`
`'FireStorm Dual Power’ gamepad by 'Thrustmaster'. Available around
`2002.
`
`See the 'Thrustmaster USB game controller roundup‘ dated 5 April 2002 on
`‘Dan's Data’ website, available at http://www.dansdata.com/tmsticks.htm.
`
`‘Run ‘N’ Drive’ Wireless gamepad by 'Thrustmaster'. Available since
`March 2007.
`
`See the review by Olin Coles dated 08 April 2009 on BenchmarkReviews.com,
`note especially ‘Closer Look‘ (page 3 of 4) available at
`http://benchrnarkreviews.com/index.php?option=com_content&task=view&id=2
`35&ltemid=65&|imit=1&limitstart=2.
`
`WO2008/131249 A1
`
`COE — See whole document, note especially buttons 113, 114 provided
`on the underside of the gamepad.
`
`
`
`Categories:
`
`Document indicating lack of novelty or inventive Document indicating technological background and/or state
`
`step
`of the art.
`Y Document indicating lack of inventive step if
`P
`Document published on or after the declared priority date but
`combined with one or more other documents of
`before the filing date of this invention.
`
`
`same category.
`
`
`& Member of the same patent family
`E
`Patent document published on or after, but with priority date
`
`earlier than, the film date of this application.
`
`
`
`Field of Search:
`Search of GB. EP, WO & US patent documents classified in the following areas of the UKCX 2
`
`Worldwide search of patent documents classified in the following areas of the IPC
`
`The following online and other databases have been used in the reparation of this search report
`l Internet keyword search.
`
`Intellectual Property Office is an operating name of the Patent Office
`
`www.ipo.gov.uk
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000010
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000010
`
`

`
`INTELLECTUAL
`PROPERTY OFFICE
`
`International Classification:
`
`Subclass
`
`A63F
`
`Subgroup
`
`0013/02
`
`Valid From
`
`01/01/2006
`
`Intellectual Property Office is an operating name of the Patent Office
`
`www.ipo.gov.uk
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p.000011
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000011
`
`

`
`2
`’/~.'\a=§
`
`Intellectual
`
`Property
`Office
`
`Patents Directorate
`
`g0n§_:§t H0353
`ar 1 Roa , Newport
`South Wales, NP10 8QQ
`
`Direct Line: 01633 814627
`‘E-Mail: greg.alcock@ipo.gov.uk
`Switchboard: 0300 300 2000
`Fax: 01633 817777
`Minicom: 0300 0200 015
`
`Simon David Burgess
`
`c/o Coulson & Rule
`13 Wh-t h 11 R d
`1 e a
`0a
`
`Rugby
`Warwickghjre
`CV21 3AE
`
`Your reference: B254.001.00
`
`Application number: GB1011078.1
`
`27 April 2015
`
`Dear Sirs
`
`Patents Act 1977: Patents Rules 2007
`
`Refusal under Section 20(1)
`
`You have not filed a reply to the report under Section 18(3) dated 16 May 2011.
`
`As your patent application was not in order for grant on 1 Januag 2015 it has now been
`treated as having been refused.
`
`Any comments you wish to make about the termination of your application should be sent to
`this Office marked "Urgent".
`
`Yours faithfully
`
`Mr greg Aicack
`
`Mr Greg Alcock
`Formalities Manager
`
`ills“ 0* E'“‘*‘“‘ P‘e3SePETl1“Pi6Rifil€1¥?%iR?ES@’é‘RFt5l€§RTfb1\°F
`Intellectual Property Office is an operating name of the Patent Office
`
`E*3lY~1007
`
`p. 000012
`www.gov.uk/ipo
`
`PETITIONER VALVE CORPORATION, Ex. 1007
`
`p. 000012