NINTENDO CO., LTD.

Patent Trials and Appeals Board

Feb 5, 2021

2020004224 (P.T.A.B. Feb. 5, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/647,315 07/12/2017 Fumiyoshi SUETAKE PTB-723-4499 2608
27562 7590 02/05/2021
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
HARPER, TRAMAR YONG
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
02/05/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FUMIYOSHI SUETAKE, HITOSHI TSUCHIYA, and
TAKANORI OKAMURA
Appeal 2020-004224
Application 15/647,315
Technology Center 3700
Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and
NATHAN A. ENGELS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11, 15–26 and 28–30. See Non–Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Nintendo CO., LTD.
Appeal Br. 3.
Appeal 2020-004224
Application 15/647,315
2
CLAIMED SUBJECT MATTER
The claims are directed to a game controller. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A game controller comprising:
a holding portion configured to be held by a user;
a first button placed on an upper surface of a main body of
the game controller and configured to allow the user to operate
the first button with a finger of the user while holding the holding
portion, the first button having a lower portion and an upper
portion that is configured to be contacted by the user's finger,
a second button placed on the upper surface of the main
body and configured to allow the user to operate the second
button with the same finger of the user that operates the first
button, the second button being located closer to a front surface
of the main body than the first button, and
a stationary surface disposed between the first button and
the second button, wherein a height of an end portion of the
stationary surf ace located closest to the back surf ace side of the
game controller is smaller than a height of an end portion of the
first button located closest to the front surface side of the game
controller when the first button is pressed, and
a height of an end portion of the stationary surf ace located
closest to the front surface side of the game controller is smaller
than a height of an end portion of the second button located
closest to the back surface side of the game controller when the
second button is pressed.
Appeal 2020-004224
Application 15/647,315
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Inoue US 5,207,426 May 4, 1993
Goto US 5,551,693 Sept. 3, 1996
Zarek US 6,147,673 Nov. 14, 2000
Neiser US 6,743,100 B1 June 1, 2004
Morris D709,882 Jul. 29, 2014
Koshima US 2002/0155868 A1 Oct. 24, 2002
Sato US 2003/0042122 A1 Mar. 6, 2003
Naghi US 2005/0269769 A1 Dec. 8, 2005
Numata US 2007 /0281787 Al Dec. 6, 2007
Urhman US 2014/0018173 A1 Jan. 16, 2014
Antonio US 2016/0151706 A1 June 2, 2016
Ironmonger US 2017/0151494 A1 June 1, 2017
Igarashi US 9,789,395 B2 Oct . 17, 2017
Wii U Pro Controller Xbox
360 Stick Mod
https://www.youtube.com/w
atch?v=jsMcz4XPNWM
Dec. 1, 2012
How to take apart your Wii
U Pro Controller
https://www.youtube.com/w
atch?v=Kgg45YISVQU
Apr. 8, 2015
White Knockoff Gamecube
Controller Review
https://www.youtube.com/w
atch?v=h719aQYYn4
Sep. 14, 2010
REJECTIONS
Claim 29 is rejected under 35 U.S.C. § 112(b) as being indefinite.
Non-Final Act. 2.
Claims 1, 8, 15, 17–18, 20–22, and 29 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Numata, Antonio, and, White Knockoff
Gamecube Controller Controller Review and Goto. Non-Final Act. 4.
Claims 2–6 are rejected under 35 U.S.C. § 103 as being unpatentable
over Numata, Antonio, White Knockoff Gamecube Controller Review,
Ironmonger, and Goto. Non-Final Act. 16.
Appeal 2020-004224
Application 15/647,315
4
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over
Numata, Antonio, White Knockoff Gamecube Controller Review, Morris,
and Goto. Non-Final Act. 23.
Claims 9–11 are rejected under 35 U.S.C. § 103 as being unpatentable
over Numata, Antonio, White Knockoff Gamecube Controller Review,
Naghi, and Goto. Non-Final Act. 25.
Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable over
Numata, Antonio, White Knockoff Gamecube Controller Review, Inoue,
and Goto. Non-Final Act. 28.
Claims 19 and 25 are rejected under 35 U.S.C. § 103 as being
unpatentable over Numata, Antonio, White Knockoff Gamecube Controller
Review, Burgess, and Goto. Non-Final Act. 29.
Claim 23 is rejected under 35 U.S.C. § 103 as being unpatentable over
Numata, Antonio, White Knockoff Gamecube Controller Review, Sato, and
Goto. Non-Final Act. 31.
Claim 24 is rejected under 35 U.S.C. § 103 as being unpatentable over
Numata, Antonio, White Knockoff Gamecube Controller Review, Wii U Pro
Controller Xbox 360 Stick Mod, How to take apart your Wii U Pro
Controller, and Goto. Non-Final Act. 32.
Claim 26 is rejected under 35 U.S.C. § 103 as being unpatentable over
Numata, Urhman, lgarashi, Wii U Pro Controller Xbox 360 Stick Mod, How
to take apart your Wii Pro U Controller, Goto, and Zarek. Non-Final Act. 36.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over
Numata, Urhman, lgarashi, Wii U Pro Controller Xbox 360 Stick Mod, How
to take apart your Wii U Pro Controller, Koshima, Goto, Zarek, and Neiser.
Non-Final Act. 45.
Appeal 2020-004224
Application 15/647,315
5
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over
Numata, Urhman, Ironmonger, and, lgarashi. Non-Final Act. 46.
OPINION
Appellant separately argues the prior-art rejections of each of the
independent claims before us, claims 1, 26 and 28, and the indefiniteness
rejection of claim 29, which depends from claim 1. Arguments pertaining to
the remaining claims are premised solely on dependency. Appeal Br. 14.

Indefiniteness: “substantially the same” in Claim 29
Claim 29 recites that a height of a portion of the first button and a
height of a portion of the second button “are substantially the same.” The
Examiner articulates the proper standards for ascertaining whether a claim
using a term of degree, such as “substantially,” complies with the
definiteness requirement of § 112(b), which is that the Specification or the
art in general must provide some standard for ascertaining the requisite
degree required to fall within the scope of the claim. Final Act. 2–3; see
MPEP § 2173.05(b) (discussing Seattle Box Co., Inc. v. Industrial Crating &
Packing, Inc., 731 F.2d 818 (Fed. Cir. 1984) and its progeny). The Examiner
alleges the absence of any such known standards based on the Specification
or the art in general for purposes of evaluating “substantially the same” with
regard to the recited heights of claim 29. Final Act. 2–3.
In the Appeal Brief, Appellant quotes a portion of paragraph 142 of
the Specification and argues that the proper standard is: “the ability to
prevent a user from erroneously pressing both buttons when intending to
press only one of the two buttons.” Appeal Br. 9. Appellant’s argument,
consisting essentially of the aforementioned statement without more, does
Appeal 2020-004224
Application 15/647,315
6
not rebut the Examiner’s position and does not sufficiently apprise us of a
standard for evaluating the claim’s use of “substantially.” If anything,
height similarities, like other tactile similarities in buttons that are intended
to be actuated without visual observation, would seem to encourage a user
to, rather than, as argued by Appellant, discourage a user from, erroneously
pressing the wrong button. Appellant’s argument in the Brief does little, if
anything, to rebut the Examiner’s position.
Appellant presented an entirely different position in the Reply Brief
(Reply Br. 1–3), but Appellant’s new argument is not responsive to the
Examiner’s Answer and we are not apprised as to any good cause for not
presenting such arguments earlier. Thus, the arguments set forth for the first
time in the Reply Brief, which were never presented for the Examiner’s
consideration are untimely under 37 C.F.R. § 41.41(b)(2) for purposes of the
present appeal.
Accordingly, on the record before us, we sustain the Examiner’s
indefiniteness rejection of claim 29.

The motivation to combine the references with regard to the rejection of
claim 1
The Examiner correctly found Numata to disclose the basic controller
of claim 1. Final act. 4–6. Although additional references were cited by the
Examiner for specific features of the recited stationary surface according to
the last limitation of claim 1, the Examiner found Numata to already disclose
a stationary surface between the buttons. Final Act. 5 (reproducing Numata
Fig. 3). Thus it is not entirely clear why, among the reasons for the
Examiner’s proposed modification to the stationary surface, the Examiner
includes a reason for providing the stationary surface itself—to separate the
Appeal 2020-004224
Application 15/647,315
7
buttons and discourage interference when attempting to actuate only one of
the buttons. Final Act. 6. In any case, there is nothing wrong with the
Examiner indicating the purpose of the stationary surface itself (in addition
to explaining the reasons for modifying it), and we agree with the
Examiner’s reasoning that the stationary surface providing spacing between
buttons 1 and 2 in Numata serves to discourage interference when a user
wants to actuate only one of the buttons. We do not agree with Appellant
that in order to prove this “the rejection would require evidence that there is
interference when the space between the shoulder buttons is absent.” Appeal
Br. 10. A skilled artisan must be presumed to know something about the art
apart from what the references disclose. See In re Jacoby, 309 F.2d 513, 516
(CCPA 1962); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir.1985).
In any case, more relevant here is the Examiner’s articulated
reasoning for modifying Numata’s buttons so as to remain above the
stationary surface when depressed: to encourage “continuously
maintain[ing] surface constant with the second button throughout the
actuation process.” Non-Final Act. 10. Many patent references do not
illustrate actions with the degree of specificity necessary to ascertain
whether conditions like those recited in the last limitation of claim 1 are met.
The Examiner reproduces two frames of the White Knockoff Gamecube
Controller video and the sequence depicted in Figures 11A and 11B of
Antonio to demonstrate such an arrangement was known in the art. Even
though Antonio is not relied upon for the features of Antonio’s button itself,
we are unware of any reasons why it would be improper for the Examiner to
rely on Antonio as evidence to demonstrate how a button might operate
and/or why. Further, a motivation to make a proposed combination, if
present, is among the core factual findings associated with an obviousness
Appeal 2020-004224
Application 15/647,315
8
inquiry. We are also unware of any restrictions on citing a reference mainly
or entirely as evidence of the existence of such a motivation. Appellant
recognized and reproduced the Examiner’s reasoning for proposing to
modify Numata’s buttons to behave in the manner recited. Appeal Br. 9.
However, Appellant does not address this reasoning other than to say there is
no evidence the proposed modification would provide the stated benefit of
encouraging continuous contact throughout actuation. Again, a skilled
artisan must be presumed to know something about the art apart from what
the references expressly disclose. It seems self-evident that if a button were
actuated to a level where its contact surface was at or below an adjacent
stationary surface it would be much easier for the user’s finger to migrate off
the button onto the stationary surface and lose contact with the button.
Figure 11B of Antonio (reproduced by the Examiner at Non-Final Act. 7)
illustrates trigger button 15 having concavity 15c with outward edges of
button maintained above adjacent stationary surfaces of housing 13 when
depressed. This is clearly well-suited to the Examiner’s stated motivation of
maintaining contact with the button as opposed to the adjacent stationary
surfaces or other buttons throughout the button’s actuation. That Antonio
does not illustrate the precise button arrangement recited in claim 1 (Reply
Br. 4–6) is inapposite, as Antonio was never cited by the Examiner for this
purpose, as explained above. “It is well-established that a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012).
For the foregoing reasons we sustain the Examiner’s obviousness
rejection of claim 1.

Appeal 2020-004224
Application 15/647,315
9
Evidence of ergonomics with regard to the rejection of claim 26.
At issue here is the level of evidence necessary to support the
Examiner’s assertion that conforming a button to the natural shape of a
human index or middle finger would improve ergonomics. Appeal Br. 11–
12; Reply Br. 6. In a similar fashion to the rejection of claim 1 discussed
above, the Examiner relies on Zarek for an explanation of why someone
skilled in the art would incorporate a button having an elongated shape
(Non-Final Act. 42 (citing Zarek Abst.; col. 2, ll. 3–5; col. 5, l. 66–col. 6, l.
9)) like that of Igarashi (Final Act. 41 (reproducing Igarashi Fig. 5)), without
relying on the specific structure of Zarek. The cited portion of Zarek
expressly states:
The second input devices 50 and the keyboard 30 shown in FIGS.
1–3 may be more comfortable and less fatiguing to use than
conventional input devices and keyboards. For example, because
the input buttons 90 have an elongated proximal section 92 and
a distal section 99 curved downward from the proximal section
92, each input button supports a substantial portion of a user's
finger even when the finger is flexed at the knuckles in an
ergonomic position. Accordingly, users may bend their fingers
over the input buttons 90 in a relaxed position, potentially
reducing the likelihood for fatigue and/or repetitive stress
disorders.
Zarek col. 5, l. 66–col. 6, l. 9.
Appellant argues that the cited portion of Zarek attributes improved
ergonomics to elongation, curvature, and orientation and the ergonomic
benefit would not necessarily be predictably achieved incorporating only
Igarashi’s elongation. Appeal Br. 11–12. First, although the Examiner
mentions elongation specifically and reproduces only Figure 5 of Igarashi to
illustrate it (final Act. 41), as that is the only aspect of Igarashi’s buttons
required to meet this particular aspect of claim 26, Igarashi clearly depicts
Appeal 2020-004224
Application 15/647,315
10
buttons that also have a curvature and are in the proper orientation to receive
a human index or middle finger. See Igarashi Figs. 2 and 3. Although claim
26 only requires elongation to satisfy this aspect of the recited first and
second buttons, claim 26 is open ended and does not preclude the presence
of the orientation and curvature as well as taught by Igarashi and Zarek.
Second, although the benefits might not be as great, we are not apprised of
any technical reasoning to believe some degree of elongation in the same
direction as that of a human’s index and middle fingers, even if it were
without curvature, would not improve a user’s ability to comfortably actuate
the buttons because there would be additional contact surface possibilities
and more force distribution. Appellant’s argument with regard to orientation
is not clear. Igarashi’s buttons 15, 16, appear to be in an orientation similar
to Numata’s buttons 1, 2. Thus, the orientation aspect of the ergonomic
benefit, matching the flexure of a human index or middle finger, would
already seem to be present in Numata.
For the foregoing reasons we sustain the Examiner’s obviousness
rejection of claim 26.

Igarashi and the oblique angles of claim 28
The argument in Appellant’s Appeal Brief is reproduced below in its
entirety:
[the Examiner’s position] is erroneous because it is evident from
Fig. 5 of Igarashi (annotated below with arrows) that the edges
indicated in the rejection are not at an oblique angle. Instead, the
edges are perpendicular.
Appeal 2020-004224
Application 15/647,315
11

In other words, the edges indicated are perpendicular to the
Z1/Z2 axis of Igarashi, whereas claim 28 recites an oblique
angle.
Appeal Br. 13.
Based on the argument, and the chosen figure of Igarashi to annotate
and reproduce, it appears to us that Appellant was attempting to argue that
the edges referenced are perpendicular to the Z1/Z2 axis (undisputedly
“parallel with a direction of pressing. . .”) because they extend in a direction
parallel to the X1/X2 axis depicted in Figure 5. This is apparently how the
Examiner understood Appellant’s argument as well, because the Examiner
reproduces and reiterates in the Answer (Ans. 79–81) the Examiner’s
annotated version of Figure 26 of Igarashi along with the position taken by
the Examiner in the Final Action (Final Act. 54–57). The Examiner
reasonably responds to the argument in the Appeal brief by explaining that
while the edges pointed to in Appellant’s annotation extend parallel to the
X1/X2 axis in Figure 5, those edges are actually oblique to a line parallel to
Appeal 2020-004224
Application 15/647,315
12
the Z1/Z2 axis as can be seen from the viewpoints depicted in Figures 26
and 28 of Igarashi.
For the first time in the reply brief, Appellant provides an annotation
of Figure 28 of Igarashi alleging that the surface extending in the X1/X2–
Y1/Y2 plane is “what Appellant considers to be the edge portion” according
to claim 28. Reply Br. 8 (reproducing Figure 28 with axes labels partially
cropped out). Of course, a surface residing in the X1/X2–Y1/Y2 plane
would typically be orthogonal to the Z1/Z2 axis. However, although
Appellant identifies the edge Appellant considers to be the edge portion,
Appellant never addresses the edge the Examiner considers as the edge
portion for purposes of claim 28. To the extent there is some implicit
argument within Appellant’s Reply Brief that it was not reasonable to
consider the edge cited by the Examiner as the edge portion for purposes of
claim 28, this argument should have been presented earlier and, to the extent
it is even presented in the Reply Brief, it is untimely for purposes of the
present appeal under 37 C.F.R. § 41.41(b)(2). Accordingly, we regard the
Examiner’s position with regard to the oblique edge portions of claim 28, as
clearly stated on pages 54–57 of the Final Action, to stand essentially
uncontroverted for purposes of the present appeal.
CONCLUSION
The Examiner’s rejections are AFFIRMED.

Appeal 2020-004224
Application 15/647,315
13
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
29 112(b) Indefiniteness 29
1, 8, 15,
17–18, 20–
22, 29
103 Numata, Antonio, White
Knockoff Gamecube
Controller Review, Goto
1, 8, 15,
17–18,
20–22, 29

2–6 103 Numata, Antonio, White
Knockoff Gamecube
Controller Review,
Ironmonger, Goto
2–6
7 103 Numata, Antonio, White
Knockoff Gamecube
Controller Review, Morris,
Goto
7
9–11 103 Numata, Antonio, White
Knockoff Gamecube
Controller Review, Naghi,
Goto
9–11
16 103 Numata, Antonio, White
Knockoff Gamecube
Controller Review, Inoue,
Goto
16
19, 25 103 Numata, Antonio, White
Knockoff Gamecube
Controller Review, Burgess,
Goto
19, 25
23 103 Numata, Antonio, White
Knockoff Gamecube
Controller Review, Sato,
Goto
23
24 103 Numata, Antonio, White
Knockoff Gamecube
Controller Review, Wii U
Pro Controller Xbox 360
Stick Mod, How to take
apart your Wii U Pro
Controller, Goto
24
Appeal 2020-004224
Application 15/647,315
14
26 103 Numata, Urhman, Wii U Pro
Controller Xbox 360 Stick
Mod, How to take apart
your Wii U Pro
Controller, Goto, Zarek
26
30 103 Numata, Urhman, lgarashi,
Wii U Pro Controller Xbox
360 Stick Mod, How to take
apart your Wii U Pro
Controller, Koshima, Goto,
Zarek, Neiser
30
28 103 Numata, Urhman,
Ironmonger, and, lgarashi
28
Overall
Outcome
1–11, 15–
26, 28–30

RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED