NINTENDO CO., LTD.

Patent Trials and Appeals Board

Oct 5, 2020

15299791 - (D) (P.T.A.B. Oct. 5, 2020)

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.
15/299,791 10/21/2016 Shinji HIROSE RYM-723-4378 1013
27562 7590 10/05/2020
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
HENZE-GONGOLA, DAVID V
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
10/05/2020 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 SHINJI HIROSE,
DAISUKE KUMAZAKI, and TAKAFUMI NISHIDA

Appeal 2019-006747
Application 15/299,791
Technology Center 2800

Before GEORGE C. BEST, BRIAN D. RANGE, and
MICHAEL G. McMANUS, Administrative Patent Judges.

RANGE, 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 1–16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “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.
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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a charger and charge
system for charging an electronic device placed on a pedestal. Spec. 1:9–10.
Claim 1 is illustrative, and we reproduce it below with emphases added to
certain key recitations we address on appeal:
1. A charger that charges an electronic device that
includes a first electrical connector with a first electrical
contact, a first fitting portion on a first surface, and a second
fitting portion on a second surface that is different from the first
surface, the charger comprising:
a placement portion configured so that the electronic
device may be placed on the placement portion to be charged;
a third fitting portion configured to be fitted to the
first fitting portion;
a fourth fitting portion configured to be fitted to the
second fitting portion in a state where the first fitting portion is
fitted to the third fitting portion; and
a second electrical connector with a second electrical
contact configured to be electrically connected to the first
electrical contact in conjunction with the fourth fitting portion
being fitted to the second fitting portion, wherein
the third fitting portion and the fourth fitting portion are
within the placement portion,
the placement portion is configured to receive the
electronic device in a linear direction,
the fourth fitting portion is movable parallel to the linear
direction, and

2 In this Decision, we refer to the Non-Final Office Action dated December
27, 2018 (“Non-Final Act.”), the Appeal Brief filed May 13, 2019 (“Appeal
Br.”), the Examiner’s Answer dated July 16, 2019 (“Ans.”), and the Reply
Brief filed September 13, 2019 (“Reply Br.”).
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the third fitting portion and the fourth fitting portion are
not electrical contacts.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Liautaud et al.
(“Liautaud”) US 4,588,938 May 13, 1986
Holzer et al.
(“Holzer”) US 2013/0058036 A1 Mar. 7, 2013
Kim US 2013/0241470 A1 Sept. 19, 2013
Shindo et al.
(“Shindo”) US 2015/0362953 A1 Dec. 17, 2015
REJECTIONS
The Examiner maintains (Ans. 3) the following rejections on appeal:
A. Claims 1–5, 7–12, 15, and 16 under 35 U.S.C. § 103 as obvious over
Shindo in view of Liautaud. Non-Final Act. 3.
B. Claims 6 and 13 under 35 U.S.C. § 103 as obvious over Shindo in
view of Liautaud and Holzer. Id. at 12.
C. Claim 14 under 35 U.S.C. § 103 as obvious over Shindo in view of
Liautaud, Holzer, and Kim. Id. at 14.
OPINION
The Examiner rejects each independent claim on appeal—claims 1,
15, and 16—as obvious over Shindo in view of Liautaud. Non-Final Act. 3.
We first address claims 1 and 16.
The Examiner finds that Shindo teaches most of the recitations of
claim 1’s charger and claim 16’s system. Non-Final Act. 3–5, 9–12 (citing
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Shindo). The Examiner finds that Shindo teaches an electronic device with a
first fitting portion on a first surface and a charger with a third fitting portion
configured to be fitted to the first fitting portion. Id. at 3–4, 9–10.
The Examiner finds that Shindo does not explicitly disclose the fourth
fitting portion is moveable parallel to the linear direction. Id. at 5, 11. The
Examiner finds that Liautaud teaches a bottom plate movable parallel to the
linear direction. Id. at 5, 12 (citing Liautaud). The Examiner determines that
it would have been obvious to modify Shindo to include the movable fourth
fitting portion taught by Liautaud to maintain electrical contacts in tight
mechanical connection. Id.
Appellant argues that Shindo does not teach the claims’ recited “third
fitting portion configured to be fitted to the first fitting portion.” Appeal Br.
8–10. Appellant’s argument persuades us of Examiner error.
To understand the Examiner’s position and Appellant’s argument, we
must first address the “first fitting portion.” The Examiner determines that
the lower back portion of Shindo’s electronic device (i.e., the Shindo PC)
corresponds to the claims’ recited “first fitting portion.” Ans. 4–7; Reply Br.
2–4. The Examiner illustrates this position by annotating Shindo Figures 3B
and 4C. Ans. 6–7. We reproduce those annotated figures below.

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Shindo Figure 3B (left) is a perspective view showing a process in which the
Shindo PC is mounted on the Shindo expansion unit. Shindo ¶ 14. Shindo
Figure 4C (right) is a sectional side view showing the PC mounted on the
expansion unit. Id. ¶ 17. The Examiner annotated each of Shindo’s figures
above with a grey shading on the lower portion of the rear of the Shindo PC
to indicate the “first fitting portion.” Ans. at 6–7.
Appellant argues that the shaded structure is not “a first fitting portion
on a first surface” as the claims recite. Appeal Br. 8–11. We agree. If the
rear of the Shindo PC corresponds to “a first surface,” the structure the
Examiner shades is part of, or a portion of, the first surface. The shaded
structure, however, is not on the first surface as the claims require. The
claims use of the word “on” indicates that the recited “fitting portions”
constitute some identifiable structure on the first surface rather than merely
being an arbitrarily defined portion of the first surface.
This interpretation of the claims is consistent with the Specification.
The Specification never refers to a “fitting portion” as merely being an
indistinct portion of a device’s surface. Rather, the Specification describes,
for example, second concave portion 102a of the electronic device as fitting
to convex portion 1200 of the charger. See, e.g., Spec. Fig. 6, 19:13–22.
The Examiner’s explanation for how Shindo teaches the claims’ “third
fitting portion configured to be fitted to the first fitting portion” is based
upon Shindo’s charger fitting to the shaded portion of the Shindo electronic
device. Ans. 4–7. As we explain above, however, the shading portion is not
a “first fitting portion.” Thus, the Examiner also lacks an adequate
explanation of how Shindo teaches a “third fitting portion” that meets the
claims’ “configured to” recitation.
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As an alternative theory, the Examiner finds that Shindo’s insulator 3a
could be considered a “first fitting portion.” Appeal Br. 8. As the Appellant
explains, however, claims 1 and 16 also recite that the device has “a first
electrical connector with a first electrical contact.” Reply Br. 3–4. The
insulator 3a surrounding Shindo’s electrical contact is part of an “electrical
connector.” See Shindo Fig. 1D (illustrating a front view of an electrical
connection terminal with electrodes 3b surrounded by insulator 3a). The
Examiner, thus, has not adequately explained how insulator 3a can be the
separately recited “first fitting portion.” See Becton, Dickinson & Co. v.
Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“[w]here a
claim lists elements separately, ‘the clear implication of the claim language’
is that those elements are ‘distinct component[s]’ of the patented invention.”
(citation omitted)).
Because the Examiner does not adequately explain why the “third
fitting portion” of claims 1 and 16 is obvious in view of the cited art, we do
not sustain the Examiner’s rejection of those claims. We also do not sustain
the Examiner’s rejections of claims 2–14 because those claims depend from
claim 1, and the Examiner’s treatment of those claims does not cure the error
we address above.
The issue we address above does not apply to independent claim 15.
Claim 15 does not recite, for example, any electronic device with a first
fitting portion on a first surface. Rather, claim 15 recites:
15. A charger that charges an electronic device that has a
first fitting portion and a first electrical connector with a first
electrical contact, the charger comprising:
a placement portion configured so that the electronic
device may be placed on the placement portion to be charged
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and the placement portion is configured to receive the
electronic device in a linear direction;
a second fitting portion configured to be fitted to the first
fitting portion, wherein the second fitting portion is not an
electrical contact;
a second electrical connector with a second electrical
contact configured to be electrically connected to the first
electrical contact; and
a movable member that is movable parallel to the linear
direction, that is movable in conjunction with the second fitting
portion being fitted to the first fitting portion, and that
surrounds of the second electrical connector.
Appeal Br. 18 (Claims App.). The Examiner’s rejection of claim 15 is
similar to the rejection of claims 1 and 16 in relevant respects. Non-Final
Act. 8–9.
Appellant argues, for two reasons, that it would not have been obvious
to modify Shindo to include Liautaud’s moveable structure. Appeal Br. 12–
13. First, Appellant argues that Shindo would not need Liautaud’s spring
loaded electrical contact mechanism because Shindo already includes spring
loaded contacts. Id. at 12. Second, Appellant argues that there is no reason to
make Shindo’s convex parts 6′d (according to the Examiner, the fourth
fitting portion) moveable as claim 1 recites and that Liautaud does not
disclose a moving fitting portion. Id. at 12–13.
Appellant’s arguments are unpersuasive. Shindo teaches elastic
electrodes 10b that deform by the weight of PC1. Shindo Figs. 6A and 6B,
¶ 70. Shindo states that the purpose of the deformation is so that the
electrodes “become electrically connected with more certainty.” Shindo
¶ 70. This purpose, however, does not negate the Examiner’s determination
that Shindo could benefit from Liautaud’s spring 74 “serving to maintain . . .
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opposing contacts in tight mechanical engagement.” Liautaud 5:24–27; see
also id. at Fig. 6; Ans. 10. Appellant argues that it would be superfluous to
enable motion of Shindo’s wall (Reply Br. 6), but the preponderance of the
evidence indicates that Liautaud’s spring would, as Liautaud teaches, help
maintain a tight mechanical engagement. Liautaud 5:24–27. Use of
Liautaud’s spring in Shindo would be no more than “predictable use of prior
art elements according to their established functions.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
Because Appellant’s argument does not identify error, we sustain the
Examiner’s rejection of claim 15. Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.”).
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–12,
15, 16 103 Shindo, Liautaud 15
1–5, 7–12,
16
6, 13 103 Shindo, Liautaud, Holzer 6, 13
14 103 Shindo, Liautaud, Holzer, Kim 14
Overall
Outcome 15 1–14, 16
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TIME PERIOD FOR 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) (2018).

AFFIRMED IN PART