throbber
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 Sterner LLP during the pendency of this application.
`
`/Werner H. Stemer/
`Werner H. Sterner
`
`Reg. No. 34,956
`
`|PR2018-00354
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`Doc Code: TR.PROV
`
`Document Description: Provisional Cover Sheet (5816)
`
`PTOISBI16 (04—07)
`Approved for use through 061'30/2010 OMB 0551—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 of information unless it displays a valid OMB control number
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`Provisional Application for Patent Cover Sheet
`This is a request for filing a PROVISIONAL APPLICATION FOR PATENT under 37 CFR 1.53(c)
`
`lnventor(s)
`
`Inventor I
`
`
`
`Middle Name Family NameGiven Name City
`
`
`
`
`
`
`
`
`
`KotkinDavid Miami
`
`
`
`Add
`All Inventors Must Be Listed — Additional Inventor Information blocks may be
`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 correspondence to (select one):
`
`6) The address corresponding to Customer Number 0 Firm or Individual Name
`
`
`Customer Number
`24131
`
`
`
`The invention was made by an agency of the United States Government or under a contract with an agency of the United
`States Government.
`
`
`
`6) No.
`
`0 Yes, the name of the U.S. Government agency and the Government contract number are:
`
`EFS — Web 1.0.1
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`Doc Code: TR.PROV
`
`Document Description: Provisional Cover Sheet (5816)
`
`PTOISBI16 (04—07)
`Approved for use through 061'30/2010 OMB 0551 —0032
`US. 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 of information unless it displays a valid OMB control number
`
`Entity Status
`Applicant claims small entity status under 37 CFR 1.27
`
`(9 Yes, applicant qualifies for small entity status under 37 CFR 1.27
`
`O No
`
`
`
`Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application that may
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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
`(If appropriate)
`
`29308
`
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`
`
`
`EFS — Web 1.0.1
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`
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`PTO/Sam (01-09)
`macro: use through 11/312011. OMB 085143035
`U.s. Paton! aim Trademark Office: us. DEPARTMENT or COMMERCE
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`
`Filing Och
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`94.19.2009
`‘33” Km"
`
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`1‘ nd Trademark Office connected lherewim:
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`r
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`_—_—-i-_
`own")!
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`lures of al Ihe invunlors or assignees of round of In. enire Imam or their mp-eeenlalhfla) an required. Submit mult‘oie forms I! more than one
`requlreu, as: below‘.
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`
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`Electronic Patent Application Fee Transmittal
`
`——
`
`Filing Date:
`
`T't'e °f '“Ventwn‘
`
`DEVICE FOR ENHANCING OPERATION OF A GAME CONTROLLER AND
`METHOD OF USING THE SAME
`
`_—
`
`ProVISIonal FIIing Fees
`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`
`USD($)
`
`
`
`Basic Filing:
`
`Miscellaneous Filing:
`
`Patent Appeals and-Interference:
`
`Post-Al|owance-and-Post-lssuance:
`
`Extension-of—Time:
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`IPR2018-00354
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`Miscellaneous:
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`Total in USD (5)
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`Electronic Acknowledgement Receipt
`
`“—
`
`——
`
`T'tIe °f Inventwn‘
`
`DEVICE FOR ENHANCING OPERATION OF A GAME CONTROLLER AND
`METHOD OF USING THE SAME
`
`
`
`——
`
`——
`
`Payment information:
`
`yes—
`Submitted with Payment
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.16 (National application filing, search, and examination fees)
`
`—Authorized User
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`
`GREENBERG,LAURENCE A
`
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`File Listing:
`
`Document
`Number
`
`Document Descri
`
`tion
`
`p
`
`File Size(Bytes)/
`Message Digest
`132411
`
`Pages
`Multi
`Part /.zip (if appl.)
`
`F-9463P-prov_chrg-auth.pdf
`
`0244b82493220199bbaa8e08bc1fbbab4a a
`
`Multipart Description/PDF files in .zip description
`
`Specification
`
`acf1c
`
`o
`Informatlon°
`
`Information:
`
`o
`'
`Informatlon.
`
`Provisional Cover Sheet (SB16)
`
`F-9463-prov_coversheet.pdf
`
`1523020
`
`7fe7496d77f0de65552bd9f3c5abaa4f064e
`0cff
`
`Drawings-only black and white line
`drawings
`
`F-9463-FIGS.pdf
`
`0338298a3899726ecd3c8d0ca1b2269de0 I
`
`5376124
`
`Power of Attorney
`
`F-9463-POA_S|GNED.pdf
`
`15485317affce530b44a6cf6eb7137f27a4c-
`bff
`
`Fee Worksheet (PTO-875)
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`fee-info.pdf
`
`b26a14a8277575963417768b9c8ed669f28
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`New Applications Under 35 U.S.C. 111
`lfa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`lfa timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO ofthe indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`the application.
`
`New International Application Filed with the USPTO as a Receiving Office
`lfa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
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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 which allow the user of the device to
`
`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.
`
`DESCRIPTION OF THE RELATED ART
`
`[0002]
`
`Prior art game controllers have buttons or keys which are depressed or
`
`otherwise actuated to carry out various movements within the game, such as
`
`controlling movements of a character on a computer screen, television or dedicated
`
`game screen. However, the limitations of the human hand require the user to
`
`release some buttons or keys to actuate others. This detracts from the user’s
`
`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]
`
`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 disadvantages of the heretofore-known devices
`
`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
`
`hand.
`
`[0004] With the foregoing and other objects in view there is provided, in
`
`accordance with the invention, 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 thumbs for other functions.
`
`[0005]
`
`In accordance with another feature of the invention, a so-called skin is
`
`placed onto part or all of the controller for permitting the additional functions
`
`according to the invention to be carried out.
`
`[0006]
`
`In accordance with a further feature of the invention, the tip or side of a
`
`finger, preferably the index fingers, is used to actuate the game controller.
`
`[0007]
`
`In accordance with an added feature of the invention, added functions
`
`such as walking, running, jumping, switching weapons, shooting and zooming can
`
`be controlled while keeping the thumbs in place on the standard buttons or keys.
`
`[0008]
`
`In accordance with an additional feature of the invention, the at least one
`
`actuator or lever is customizable by plastically deforming the actuator to fit the hand
`
`of a particular user.
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`[0009]
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`In accordance with yet another feature of the invention, levers, preferably
`
`with hinges, are provided for actuation by parts of the hand other than the thumb.
`
`[0010]
`
`In accordance with yet a further feature of the invention, a line with
`
`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.
`
`[0012] With the objects of the invention in view, there is concomitantly provided
`
`a method for using a game controller, which comprises moving an actuator with
`
`parts of the hand other than the thumbs while using the thumbs for other functions.
`
`[0013]
`
`Other features which are considered as characteristic for the invention
`
`are set forth in the appended claims.
`
`[0014]
`
`Although the invention is illustrated and described herein as embodied in
`
`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
`
`various modifications and structural changes may be made therein without
`
`departing from the spirit of the invention and within the scope and range of
`
`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
`
`description of the specific embodiment when read in connection with the
`
`accompanying drawings.
`
`BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING
`
`[0016]
`
`Fig. 1
`
`is a perspective view of a Play Station 3 game controller with the
`
`skin of the invention in place and illustrating a hand of a user;
`
`[0017]
`
`Fig. 2 is a view similar to Fig. 1 without showing the hand of the user;
`
`[0018]
`
`Fig. 3 is a perspective view of the skin of Fig. 1 alone;
`
`[0019]
`
`Fig. 4 is a perspective view of the Play Station 3 game controller without
`
`the skin;
`
`[0020]
`
`Figs. 5A, 5B and 5C are perspective views of the Play Station 3 game
`
`controller with the skin, but without the illustration of the hand of the user and
`
`without annotations;
`
`[0021]
`
`Fig. 6 is a perspective view of the Play Station 3 game controller with an
`
`electronic push device or trigger;
`
`[0022]
`
`Fig. 7 is a perspective view of the Xbox 360 game controller with the skin
`
`of the invention in place and illustrating a hand of a user;
`
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`F-9463
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`[0023]
`
`Fig. 8 is a perspective view of the skin of Fig. 7 alone;
`
`[0024]
`
`Fig. 9 is a further annotated, perspective view of the skin of Fig. 7 alone;
`
`[0025]
`
`Fig. 10 is a front perspective view of the Xbox 360 game controller with
`
`the skin of the invention in place and illustrating a hand of a user;
`
`[0026]
`
`Fig. 11 is a rear perspective view, without the illustration of the hand of
`
`the user;
`
`[0027]
`
`Fig. 12 is a perspective view of a battery-powered skin for the Xbox 360
`
`game controller; and
`
`[0028]
`
`Figs. 13 and 14 are perspective views of the Xbox 360 game controller
`
`without the skin.
`
`DETAILED DESCRIPTION OF THE INVENTION
`
`[0029]
`
`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
`
`completely removable rubber or plastic skin B in place. The tip of the index finger is
`
`positioned under a lever C of the skin. The side of the index finger is under a lever
`
`D, so that the levers C and D can be actuated without using or moving the thumbs.
`
`A removable tape E is attached to a trigger on the left. These features free up
`
`three fingers to provide a great playing advantage, while avoiding over-use injuries.
`
`A line F extends to a lever for adjustment backwards for tensioning to the player’s
`
`-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
`
`zoom, which can thus be activated without using the left index finger. A mere
`
`change of the user’s grip will slightly pull the line controlling the trigger to operate
`
`the left trigger. The triggers have hinges F2 and may be plastically deformable, for
`
`instance due to wires running therethrough so as to fit a particular user’s hand.
`
`[0030]
`
`Fig. 6 shows an electronic push device or trigger for use with the Play
`
`Station 3 game controller or future game controllers. A motor A moves a lever B
`
`and pushes a button when the controller is tilted up or down. A sensor C is
`
`provided for sensing the tilt. Batteries for the electronic trigger are inserted in the
`
`front of the controller.
`
`[0031]
`
`The embodiment of the invention for use with the Xbox 360 game
`
`controller A is shown Figs. 7—1 1. A completely removable rubber or plastic skin B
`
`is placed over the controller. The tip of the index finger operates a lever C. The
`
`side of the index finger operates a lever D having hinges F2 and being plastically
`
`deformable, as described above. These features free up three fingers to provide a
`
`great playing advantage, while avoiding over-use injuries. Fig. 8 shows that a
`
`removable tape E is attached to a left trigger F and passes underneath as indicated
`
`by a broken line G, for fixing the zoom in its selected position. Fig. 9 illustrates that
`
`thumbs no longer need to leave the analog keys or buttons, since a finger assumes
`
`the operation previously required of the thumb. Fig. 10 shows another view of the
`
`controller with the skin and the perspective view of Fig. 11 shows how the lever
`
`tightens the string by pulling back.
`
`|PR2018-00354
`
`COLLECTIVE EX1004 Page 16
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 16
`
`

`

`F-9463
`
`[0032]
`
`Fig. 12 is a perspective view of a battery-powered skin 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.
`
`|PR2018-00354
`
`COLLECTIVE EX1004 Page 17
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 17
`
`

`

`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 thumbs for other
`
`functions.
`
`2. The device according to claim ’I, wherein a skin is placed onto part or all of the
`
`controller for permitting additional functions to be carried out.
`
`3. The device according to claim 1, wherein a tip 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 ’I, wherein at least one actuator or lever is
`
`customizable by plastically deforming the actuator to 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.
`
`|PR2018-00354
`
`COLLECTIVE EX1004 Page 18
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 18
`
`

`

`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 thumbs for other functions.
`
`|PR2018-00354
`
`COLLECTIVE EX1004 Page 19
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 19
`
`

`

`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 or tip of the index
`
`finger, while using the thumbs for 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 thumbs for other functions.
`
`LAG:rp — Document1 // 5/19/2009
`
`-10-
`
`|PR2018-00354
`
`COLLECTIVE EX1004 Page 20
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 20
`
`

`

`
`
`|PR2018-00354
`
`COLLECTIVE EX1004 Page 21
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 21
`
`

`

`
`
`|PR2018—OO354
`
`COLLECTIVE EX1004 Page 22
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 22
`
`

`

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`
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`
`
`
`|PR2018-00354
`
`COLLECTIVE EX1004 Page 23
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 23
`
`

`

`
`
`|PR2018-00354
`
`COLLECTIVE EX1004 Page 24
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 24
`
`

`

`5/12
`
`
`
`|PR2018-00354
`
`COLLECTIVE EX1004 Page 25
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 25
`
`

`

`
`
`|PR2018—OO354
`
`COLLECTIVE EX1004 Page 26
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 26
`
`

`

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`
`|PR2018—OO354
`
`COLLECTIVE EX1004 Page 27
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 27
`
`

`

`N:w
`
`
`
`|PR2018—OO354
`COLLECTIVE EX1004 Page 28
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 28
`
`

`

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`|PR2018-00354
`
`COLLECTIVE EX1004 Page 29
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 29
`
`

`

`
`
`|PR2018-00354
`
`COLLECTIVE EX1004 Page 30
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 30
`
`

`

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`|PR2018—OO354
`
`COLLECTIVE EX1004 Page 31
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 31
`
`
`
`

`

`Fig. 13
`Fig. 14'
`
`
`
`IPR2018-00354
`
`COLLECTIVE EX1004 Page 32
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 32
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addless. COMMISSIONER FOR PATENTS
`PO Box 1450
`Alexandria, ViJgLnia 22313-1450
`wwwusptogov
`
`APPLICATION
`NUMBER
`
`FILING or
`371(c) DATE
`
`GRP ART
`UNIT
`
`
`
`
`
`F
`
`61/179,551
`
`05/19/2009
`
`FEE REC'D
`
`110
`
`24131
`LERNER GREENBERG STEMER LLP
`P 0 BOX 2480
`HOLLYWOOD, FL 33022-2480
`
`ATTY.DOCKET.NO
`
`TOT CLAHVIS IND CLAIMS
`
`F 9463
`
`CONFIRMATION NO. 1109
`
`FILING RECEIPT
`
`lllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllll lllllllllllllllllllllllll
`000000036200836
`
`Date Mailed: 06/02/2009
`
`It will not be examined for patentability and will
`Receipt is acknowledged of this provisional patent application.
`become abandoned not later than twelve months after its filing date. Any correspondence concerning the application
`must include the following identification information: the US. APPLICATION NUMBER, FILING DATE, NAME OF
`APPLICANT, and TITLE OF INVENTION. Fees transmitted by check or 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 processes the reply
`to the Notice, the USPTO will generate another Filing Receipt incorporating the requested corrections
`
`Applicant(s)
`
`David Kotkin, Miami, FL;
`Power of 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 used for 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 US. patent extend only throughout the 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 not result in a grant of "an international
`page 1 of 3
`
`lPR2018-00354
`
`COLLECTIVE EX1004 Page 33
`
`IPR2018-00354
`COLLECTIVE EX1004 Page 33
`
`

`

`patent" and does not eliminate the need of applicants to 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 accordance with 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
`foreign countries to ensure that patent rights are not lost prematurely.
`
`Applicants also are advised that in the case of inventions made in the United States, the Director of the USPTO must
`issue a license before applicants can apply for a patent in a foreign country. The filing of a US. patent application
`serves as a request for a foreign filing license. The application's filing receipt contains further information and
`guidance as to the status of applicant's license for foreign filing.
`
`Applicants may wish to consult the USPTO booklet, "General Information Concerning Patents" (specifically, the
`section entitled "Treaties and Foreign Patents") for more information on timeframes and deadlines for filing foreign
`patent applications. The guide is available either by contacting the USPTO Contact Center at 800-786-9199, or it
`can be viewed on the USPTO website at http://www.uspto.gov/web/offices/pac/doc/general/index.html.
`
`For information on preventing theft of your intellectual property (patents, trademarks and copyrights), you may wish
`to consult the US. Government website, http

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