Docket No.: F-9463
`
`CHARGE AUTHORIZATION
`
`The Patent Office is hereby authorized to charge any fees due under
`
`37 CFR §§ 1.16 and 1.17 or deficiencies in required fees to deposit account 12-1099
`
`of Lerner Greenberg Stemer LLP during the pendencyof this application.
`
`/Werner H. Stemer/
`Werner H. Stemer
`Reg. No. 34,956
`
`IPR2018-00354
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`Doc Code: TR.PROV
`Document Description: Provisional Cover Sheet (SB16)
`
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`Provisional Application for Patent Cover Sheet
`This is a requestforfiling a PROVISIONAL APPLICATION FOR PATENTunder 37 CFR 1.53(c)
`
`Inventor(s)
`
`Inventor 1
`
`
`
`Given Name
`
`Middle Name
`
`Family Name
`
`City
`
`David
`
`Kotkin
`
`Miami
`
`Country
`
`US
`
`
`All Inventors Must Be Listed — Additional Inventor Information blocks may be
`Add
`generated within this form by selecting the Add button.
`
`Title of Invention
`Device for Enhancing Operation of a Game Controller and Method of Using...
`
`Attorney Docket Number (if applicable)
`
`F 9463
`
`Correspondence Address
`
`Direct all correspondenceto (select one):
`
`(*) The address corresponding to Customer Number
`
`©) Firm or Individual Name
`
`Customer Number
`
`24131
`
`
`The invention was made by an agencyof the United States Government or under a contract with an agency of the United
`States Government.
`
`@) No.
`
`©) Yes, the name of the U.S. Government agency and the Government contract numberare:
`
`EFS - Web 1.0.1
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`Doc Code: TR.PROV
`Document Description: Provisional Cover Sheet (SB16)
`
`PTO/SB/16 (04-07)
`Approved for use through 06/30/2010 OMB 0651-0032
`U.S. Patent and Trademark Office: U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection cf information unlessit displays a valid OMB control number
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`Entity Status
`Applicant claims small entity status under 37 CFR 1.27
`
`(*) Yes, applicant qualifies for small entity status under 37 CFR 1.27
`© No
`
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`
`Signature
`
`Please see 37 CFR 1.4(d} for the form of the signature.
`
`/Laurence A. Greenberg/
`
`Date (YYYY-MM-DD}
`
`2009-05-19
`
`First Name
`
`Laurence
`
`Last Name
`
`Greenberg
`
`Registration Number
`(lf appropriate}
`
`29308
`
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`H
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`POWEROF ATTORNEY
`|
`Appleton Number J
`OR
`|
`[OvidKonin
`OCATION OF POWER OF ATTORNEY
`David Kotkin
`ITH A NEW POWER OF ATTORNEY
`bGE OF CORRESPONDENCE ADDRESS
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`PT)U7pyfrattuneot Appricant or Assignee of Record
`SanaANDeSa
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`NOTE: Signatures of all the inventors or assignees of record af the entre Interest or thelr representative(s) are required, Submit multipte forms |f mors than one
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`IPR2018-00354
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`Electronic Patent Application Fee Transmittal
`
`Title of Invention:
`
`DEVICE FOR ENHANCING OPERATION OF A GAME CONTROLLER AND
`METHOD OFUSING THE SAME
`
`a
`
`Provisional Filing Fees
`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`USD(S$)
`
`omen
`
`
`
`Basic Filing:
`
`Miscellaneous-Filing:
`
`Patent-Appeals-and-Interference:
`
`Post-Allowance-and-Post-Issuance:
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`Extension-of-Time:
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`IPR2018-00354
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`Total in USD ($)
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`Miscellaneous:
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`IPR2018-00354
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`
`
`a e
`
`ee
`
`ee
`
`Paymentinformation:
`
`Submitted with Payment
`
`yes
`
`Payment was successfully received in RAM
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.16 (National application filing, search, and examination fees)
`
`Authorized User
`
`GREENBERG,LAURENCE A
`
`TheDirector of the USPTO is hereby authorized to charge indicated fees and credit any overpaymentas follows:
`
`Electronic AcknowledgementReceipt
`
`ine
`
`Title of Invention:
`
`DEVICE FOR ENHANCING OPERATION OF A GAME CONTROLLER AND
`METHODOF USING THE SAME
`
`IPR2018-00354
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`ee
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`acflc
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`Miscellaneous Incoming Letter
`
`Provisional Cover Sheet (SB16)
`
`F-9463-prov_coversheet.pdf
`
`Drawings-only black and white line
`drawings
`
`F-9463-FIGS.pdf
`
`1523020
`
`7fe7496d77f0de65552bd9f3c5abaa4f064e
`Ocff
`
`5376124
`
`0338298a3899726ecd3c8d0ca1b2269de0b
`3c26d
`
`Information:
`
`Information:
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`Information:
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`Information:
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`File Listing:
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`Pages
`Multi
`File Size(Bytes)/
`DocumentDescription
`Document
`
`
`
`Number Message Digest|Part/.zip|P (if appl.)
`132411
`
`F-9463P-prov_chrg-auth.pdf
`
`0244b824932201 99bbaa8e08bc1fbbab4ad
`
`ee
`
`Multipart Description/PDF files in .zip description
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`Power of Attorney
`
`F-9463-POA_SIGNED.pdf
`
`1548531 7affces30b44a6cf6eb7137f27a4ch
`bff
`
`Fee Worksheet (PTO-875)
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`fee-info.pdf
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`b26a14a827757596341 7768b9c8ed66928}
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`New Applications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary componentsfora filing date (see 37 CFR
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`F-9463
`
`DEVICE FOR ENHANCING OPERATION OF A GAME
`CONTROLLER AND METHOD OF USING THE SAME
`
`BACKGROUND OF THE INVENTION
`
`Field of the Invention:
`
`[0001]
`
`The invention relates to a device for enhancing operation of a game
`
`controller and a method of using the same whichallow the user of the device to
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`manually control features of a game beyond those which are assigned to the usual
`
`buttons or keys without moving the user’s hand from the usual position.
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`DESCRIPTION OF THE RELATED ART
`
`[0002]
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`Prior art game controllers have buttons or keys which are depressed or
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`otherwise actuated to carry out various movements within the game, such as
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`controlling movements of a character on a computer screen, television or dedicated
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`game screen. However, the limitations of the human hand require the user to
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`release some buttons or keys to actuate others. This detracts from the user’s
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`ability to play the game to the best of the user’s ability and can also lead to
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`debilitating repetitive use injuries or medical conditions, such as so-called “Play
`
`Station Palm”or “Blackberry Finger.”
`
`BRIEF SUMMARY OF THE INVENTION
`
`[0003]
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`It is accordingly an object of the invention to provide a device for
`
`enhancing operation of a game controller and a method of using the same, which
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`F-9463
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`overcome the above-mentioned disadvantagesof the heretofore-known devices
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`and methods of this general type and which permit the user to control many more
`
`features of a game than would normally be possible while using the fingers of one
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`hand.
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`[0004] With the foregoing and other objects in view there is provided, in
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`accordancewith the invention, a device for enhancing operation of a game
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`controller, comprising at least one actuator cooperating with a game controller for
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`adding functions to be controlled with parts of the hand other than the thumbs while
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`using the thumbsfor other functions.
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`[0005]
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`In accordance with another feature of the invention, a so-called skin is
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`placed onto partor all of the controller for permitting the additional functions
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`according to the invention to be carried out.
`
`[0006]
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`In accordance with a further feature of the invention, the tip or side of a
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`finger, preferably the index fingers, is used to actuate the game controller.
`
`[0007]
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`In accordance with an addedfeature of the invention, added functions
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`such as walking, running, jumping, switching weapons, shooting and zooming can
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`be controlled while keeping the thumbsin place on the standard buttons or keys.
`
`[0008]
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`In accordance with an additional feature of the invention, the at least one
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`actuator or lever is customizable by plastically deforming the actuator to fit the hand
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`of a particular user.
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`F-9463
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`[0009]
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`In accordance with yet another feature of the invention, levers, preferably
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`with hinges, are provided for actuation by parts of the hand other than the thumb.
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`[0010]
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`In accordancewith yet a further feature of the invention, a line with
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`tension adjustable for a given user is used to control a zoom function.
`
`[0011]
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`In accordance with yet an added feature of the invention, an electronic
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`trigger device is provided and connected to batteries stored in the game controller.
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`[0012] With the objects of the invention in view, there is concomitantly provided
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`a method for using a game controller, which comprises moving an actuator with
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`parts of the hand other than the thumbs while using the thumbsfor other functions.
`
`[0013]
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`Other features which are considered as characteristic for the invention
`
`are set forth in the appendedclaims.
`
`[0014]
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`Although the invention is illustrated and described herein as embodiedin
`
`a device for enhancing operation of a game controller and a method of using the
`
`same, it is nevertheless not intended to be limited to the details shown, since
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`various modifications and structural changes may be made therein without
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`departing from the spirit of the invention and within the scope and range of
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`equivalents of the claims.
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`F-9463
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`[0015]
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`The construction of the invention, however, together with additional
`
`objects and advantages thereof will be best understood from the following
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`description of the specific embodiment when read in connection with the
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`accompanying drawings.
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`BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING
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`[0016]
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`Fig. 1
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`is a perspective view of a Play Station 3 game controller with the
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`skin of the invention in place and illustrating a hand of a user;
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`[0017]
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`Fig. 2 is a view similar to Fig. 1 without showing the hand of the user;
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`[0018]
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`Fig. 3 is a perspective view of the skin of Fig. 1 alone;
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`[0019]
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`Fig. 4 is a perspective view of the Play Station 3 game controller without
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`the skin;
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`[0020]
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`Figs. 5A, 5B and 5C are perspective views of the Play Station 3 game
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`controller with the skin, but without the illustration of the hand of the user and
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`without annotations;
`
`[0021]
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`Fig. 6 is a perspective view of the Play Station 3 game controller with an
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`electronic push device or trigger;
`
`[0022]
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`Fig. 7 is a perspective view of the Xbox 360 game controller with the skin
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`of the invention in place and illustrating a hand of a user;
`
`-4-
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`[0023]
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`Fig. 8 is a perspective view of the skin of Fig. 7 alone;
`
`[0024]
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`Fig. 9 is a further annotated, perspective view of the skin of Fig. 7 alone;
`
`[0025]
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`Fig. 10 is a front perspective view of the Xbox 360 game controller with
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`the skin of the invention in place and illustrating a hand of a user;
`
`[0026]
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`Fig. 11 is a rear perspective view, without the illustration of the hand of
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`the user;
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`[0027]
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`Fig. 12 is a perspective view of a battery-poweredskin for the Xbox 360
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`game controller; and
`
`[0028]
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`Figs. 13 and 14 are perspective views of the Xbox 360 game controller
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`without the skin.
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`DETAILED DESCRIPTION OF THE INVENTION
`
`[0029]
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`Referring now to the figures of the drawing in detail and first, particularly,
`
`to Figs. 1-5C thereof, there is seen a Play Station 3 game controller A with a
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`completely removable rubber or plastic skin B in place. The tip of the index finger is
`
`positioned undera lever C of the skin. The side of the index finger is undera lever
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`D, so that the levers C and D can be actuated without using or moving the thumbs.
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`A removable tapeEis attached to a trigger on the left. These features free up
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`three fingers to provide a great playing advantage, while avoiding over-useinjuries.
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`A line F extends to a lever for adjustment backwards for tensioning to the player's
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`-5-
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`F-9463
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`preference. A line G pulls the trigger so as to be highly adjustable, such as for a
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`zoom, which can thus be activated without using the left index finger. A mere
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`change ofthe user’s grip will slightly pull the line controlling the trigger to operate
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`the left trigger. The triggers have hinges F2 and maybeplastically deformable, for
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`instance due to wires running therethrough so asto fit a particular user’s hand.
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`[0030]
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`Fig. 6 showsan electronic push device or trigger for use with the Play
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`Station 3 game controller or future game controllers. A motor A movesa lever B
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`and pushesa button when the controller is tilted up or down. A sensorC is
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`provided for sensing the tilt. Batteries for the electronic trigger are inserted in the
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`front of the controller.
`
`[0031]
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`The embodiment of the invention for use with the Xbox 360 game
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`controller A is shown Figs. 7-11. A completely removable rubber or plastic skin B
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`is placed over the controller. The tip of the index finger operates a lever C. The
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`side of the index finger operates a lever D having hinges F2 and being plastically
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`deformable, as described above. These features free up three fingers to provide a
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`great playing advantage, while avoiding over-use injuries. Fig. 8 showsthat a
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`removable tape E is attachedto a left trigger F and passes underneath as indicated
`
`by a brokenline G, for fixing the zoom in its selected position. Fig. 9 illustrates that
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`thumbs no longer need to leave the analog keys or buttons, since a finger assumes
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`the operation previously required of the thumb. Fig. 10 shows anotherview of the
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`controller with the skin and the perspective view of Fig. 11 shows howthe lever
`
`tightens the string by pulling back.
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`COLLECTIVE EX1004 Page 16
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`F-9463
`
`[0032]
`
`Fig. 12 is a perspective view of a battery-poweredskin for the Xbox 360
`
`game controller, in which a motor A pushes a button when the controller is tilted
`
`down or up. A motion sensor C and batteries D on the front of the controller are
`
`provided for this purpose. The trigger directions are indicated with up and down
`
`arrows. Figs. 13 and 14 are views of the Xbox 360 game controller without the
`
`skin.
`
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`COLLECTIVE EX1004 Page 17
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`F-9463
`
`CLAIMS
`
`1. A device for enhancing operation of a game controller, comprising at least one
`
`actuator cooperating with a game controller for adding functions to be controlled
`
`with parts of the hand other than the thumbs while using the thumbsfor other
`
`functions.
`
`2. The device according to claim 1, wherein a skin is placed onto partorall of the
`
`controller for permitting additional functions to be carried out.
`
`3. The device according to claim 1, whereinatip or side of a finger, preferably the
`
`index finger, is used to actuate the game controller.
`
`4. The device according to claim 1, wherein added functions such as walking,
`
`running, jumping, switching weapons, shooting and zooming can be controlled
`
`while keeping the thumbs in place on standard buttons or keys of the game
`
`controller.
`
`5. The device according to claim 1, wherein at least one actuator or lever is
`
`customizable byplastically deforming the actuatorto fit the hand of a particular
`
`user.
`
`6. The device according to claim 1, wherein levers, preferably with hinges, are
`
`provided for actuation by parts of the hand other than the thumb.
`
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`COLLECTIVE EX1004 Page 18
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`

`

`7. The device according to claim 1, which further comprises a line with tension
`
`adjustable for a given user is used to control a zoom function.
`
`F-9463
`
`8. The device according to claim 1, wherein an electronic trigger device is provided
`
`and connected to batteries stored in the game controller.
`
`9. A method for using a game controller, which comprises moving an actuator with
`
`parts of the hand other than the thumbs while using the thumbsfor other functions.
`
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`COLLECTIVE EX1004 Page 19
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`

`

`F-9463
`
`ABSTRACT OF THE DISCLOSURE
`
`A device for enhancing operation of a game controller, includes at least one
`
`actuator cooperating with a game controller for adding functions to be controlled
`
`with parts of the hand other than the thumbs, such as the side ortip of the index
`
`finger, while using the thumbsfor other functions. A skin is placed onto part or all
`
`of the controller for permitting additional functions to be carried out. The skin may
`
`carry triggers, an adjustable zoom line and a battery-operated electronic trigger. A
`
`method for using a game controller includes moving an actuator with parts of the
`
`hand other than the thumbs while using the thumbsfor other functions.
`
`LAG:rp - Document1 // 5/19/2009
`
`-10-
`
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`

`

`
`
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`IPR2018-00354
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`

`

` SN
`
`a
`
`CSenheet
`Cy)
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 22
`
`caaXe)>SS
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 22
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`
`
`
`
`

`

`Fig.3
`
`_ — o
`N—
`
`O)
`
`
`
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`COLLECTIVE EX1004 Page 23
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`IPR2018-00354
`COLLECTIVE EX1004 Page 23
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`

`

`
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 24
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`IPR2018-00354
`COLLECTIVE EX1004 Page 24
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`

`

`9/12
`
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`COLLECTIVE EX1004 Page 25
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`COLLECTIVE EX1004 Page 25
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`

`

`
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 26
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`IPR2018-00354
`COLLECTIVE EX1004 Page 26
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`

`

`INNloan
`
` eea
`
`aoTN
`
`1
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 27
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 27
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`

`

`CL/8
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 28
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`IPR2018-00354
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`

`

`Fig. 8
`THI MES |
`
`la .
`“THOMBS
`(AB NYS S ~~ NO Lance
`fis Ss gs 6
`HAVE TO LEAVE
`a 3
`3
`ANDLOA (Comite
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`60 ZOOM 1S Fixed
`
`
`SHES
`
`FINGER Moves,
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`o™™~ SIDE Of INDEX MOVES
`B Od Odeo.
`THO tCales
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`
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`
`IPR2018-00354
`COLLECTIVE EX1004 Page 29
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 29
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`

`

`.
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 30
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`IPR2018-00354
`COLLECTIVE EX1004 Page 30
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`

`

`NACA oy
`
`NO
`
`Pia
`
`CL/bb
`
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`
`ATL
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`seeee
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 31
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 31
`
`
`
`

`

`wth
`
`ww
`
`12 / 12 oe
`SKBOKBO controller”
`
`Fig. 13
`Fig. 14
`
`
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 32
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`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFIGE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`!
`OX.
`Address: COMMISSIONER FOR PATENTS
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION
`NUMBER
`
`FILING or
`371(c) DATE
`
`GRP ART
`UNIT
`
`
`
`
`
`FIL
`
`61/179,551
`
`05/19/2009
`
`FEE REC'D
`
`110
`
`24131
`LERNER GREENBERG STEMER LLP
`
`ATTY.DOCKET.NO
`
`ITOT CLAIMSJIND CLAIMS
`
`F 9463
`
`CONFIRMATION NO. 1109
`
`FILING RECEIPT
`
`P O BOX 2480 A000000036200836
`
`HOLLYWOOD, FL 33022-2480
`
`Date Mailed: 06/02/2009
`
`It will not be examined for patentability and will
`Receipt is acknowledged of this provisional patent application.
`become abandonednotlater than twelve monthsafter its filing date. Any correspondence concerning the application
`mustinclude the following identification information: the U.S. APPLICATION NUMBER, FILING DATE, NAME OF
`APPLICANT, and TITLE OF INVENTION. Feestransmitted by checkor draft are subject to collection. Please verify
`the accuracy of the data presented on this receipt. If an error is noted on this Filing Receipt, please submit
`a written request for a Filing Receipt Correction. Please provide a copy of this Filing Receipt with the
`changes noted thereon. If you received a "Notice to File Missing Parts" for this application, please submit
`any corrections to this Filing Receipt with your reply to the Notice. When the USPTO processesthe reply
`to the Notice, the USPTO will generate another Filing Receipt incorporating the requested corrections
`
`Applicant(s)
`
`David Kotkin, Miami, FL;
`Powerof Attorney: The patent practitioners associated with Customer Number 24131
`
`If Required, Foreign Filing License Granted: 05/28/2009
`
`The country code and number of your priority application, to be usedfor filing abroad under the Paris Convention,
`is US 61/179,551
`
`Projected Publication Date: None, application is not eligible for pre-grant publication
`
`Non-Publication Request: No
`
`Early Publication Request: No
`** SMALL ENTITY **
`Title
`
`Device for Enhancing Operation of a Game Controller and Method of Using The Same
`
`PROTECTING YOUR INVENTION OUTSIDE THE UNITED STATES
`
`Since the rights granted by a U.S. patent extend only throughoutthe territory of the United States and have no
`effect in a foreign country, an inventor who wishes patent protection in another country must apply for a patent
`in a specific country or in regional patent offices. Applicants may wish to consider the filing of an international
`application under the Patent Cooperation Treaty (PCT). An international (PCT) application generally has the same
`effect as a regular national patent application in each PCT-member country. The PCT process simplifies the filing
`of patent applications on the same invention in member countries, but does notresult in a grantof "an international
`page 1 of 3
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`

`patent" and doesnoteliminate the needof applicantsto file additional documents and fees in countries where patent
`protection is desired.
`
`Almost every country has its own patent law, and a person desiring a patent in a particular country must make an
`application for patent in that country in accordancewith its particular laws. Since the laws of many countries differ
`in various respects from the patent law of the United States, applicants are advised to seek guidance from specific
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`
`Applicants also are advised that in the case of inventions madein the United States, the Director of the USPTO must
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`
`Applicants may wish to consult the USPTO booklet, "General Information Concerning Patents”(specifically, the
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`can be viewed on the USPTO web