Ex Parte Ishimaru et al

Board of Patent Appeals and Interferences

Oct 21, 2009

10756251 (B.P.A.I. Oct. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIROSHI ISHIMARU and TETSUYA KIFUNE
____________

Appeal 2009-0029581
Application 10/756,251
Technology Center 3700
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Decided: October 21, 2009
____________

Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the patent applicants’ appeal from the rejection
of claims 6 and 7 under 35 U.S.C. § 103(a). The Board’s jurisdiction for this
appeal is under 35 U.S.C. § 6(b).

1 Heard Sep. 17, 2009.
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Statement of the Case
The claims are directed to a game controller with a trigger button.
According to Appellants, the “claimed invention addresses a specific
problem, and that is the number of assembly parts of the trigger buttons . . .
is large, caus[ing] an increase of the material cost and poor assembly
efficiency. The invention greatly simplifies the structure of the prior art,
reducing cost and improving assembly efficiency, without loss of function.”
(App. Br. 9; see also Spec. 1:5-8; 6:9-14). According to Appellants,
improved efficiency is achieved, in part, by utilizing grooves with partition
plates in the trigger button guide plate (Spec. 6:15-25; 7:20-27; App. Br. 9).
Claims 6 and 7 are the only pending claims and stand rejected by the
Examiner under 35 U.S.C. § 103(a) as obvious in view of prior art which is
described in the Specification (Ans. 3). This prior art is said to correspond
to Japanese Published Patent Application No. JP2003-133652 (“the ‘652
Application”) (Spec. 1; App. Br. 7-8), but the Examiner noted that not all the
figures admitted in the Specification to be prior art (Figure 6-14) appeared in
the published patent application (id.). For the purpose of this appeal, we
consider Specification Figures 6-14 to be the prior art upon which the
rejection is based, as did the Examiner (id.).
Claim 6 is representative and reproduced below. Claim 7 depends on
claim 6, and therefore incorporates all its limitations.
6. A game controller, comprising:
a case having an opening;
a trigger button partially protruding from said opening;
a trigger guide for said trigger button and having fitting grooves
provided on left and right sides of a back end surface of the trigger guide;
partition plates formed in the left and right fitting grooves of the
trigger guide partitioning the fitting grooves;
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ribs formed in the case for holding a lower end portion of the trigger
guide; and
standing portions formed in the case outside the ribs, the standing
portions being fitted into said fitting grooves, the partition plates contacting
upper ends of the left and right standing portions thereby securely
positioning and holding the trigger guide.

Statement of the Issue
The Examiner found that the prior art game controller had a trigger
button with a trigger guide and grooves, but the grooves were oriented on
the upper guide surface, rather than the back surface as recited in the claims.
The Examiner found that the prior art grooves had sides which served as
“partition plates,” meeting the corresponding limitation of the claims.
Appellants contend that the Examiner erred in these findings and that
the prior art trigger guide does not comprise partition plates as required by
the claims.
The issue in this rejection is whether Appellants established that the
Examiner erred in finding that the prior art trigger button had a guide plate
with partition plates.
Principles of Law
“The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior
art.” In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994).

Findings of Fact (“FF”)
Claim 6
1. Claim 6 is to a game controller comprising the following elements: a
case, a trigger button, a trigger guide having fitting grooves on the back end
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surface, partition plates in the fitting grooves, ribs, and standing portions
formed in the case.
2. The “partition plates” on the back surface of the trigger guide are recited
to be “formed in the left and right fitting grooves of the trigger guide
partitioning the fitting grooves.”
3. The “partition plates” are claimed as “contacting upper ends of the left
and right standing portions thereby securely positioning and holding the
trigger guide.”

The prior art
4. The Specification acknowledged that “[t]his applicant,” had filed an
earlier application for a game controller as Japanese Patent Application
Publication No. JP2003-133652. (Spec. 1:10-16).
5. Figures 6-14 showed the game controller described in the Japanese Patent
Application and characterized it as a “conventional example.” (Spec. 1:14-
16; Spec. 8:12-9:1).
6. There is no dispute that the ‘652 Application, as disclosed in the instant
Specification, described the basic elements of the claimed game controller,
including the case, trigger button, trigger guide, and ribs (Figs. 8-10).

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7. The ‘652 trigger button with trigger guide is shown in Figure 9, which is
reproduced below:

Figure 9 shows the right-side trigger button 27 (26 in the left-side button),
trigger guide 35 (34 in the left-side button), and semi-cylindrical fitting
portions 40, 41 (38, 39 in the left-side button) which “are provided
projectingly toward the [guide’s] upside (Spec. 3:4-8; 8:20-22).
8. The fitting portions 40 and 41 are shown in a front view of the trigger
guide as reproduced in prior art Figure 10 (Spec. 8:23-24).

Prior art Figure 10 shows the fitting portions 40 and 41, projecting
from trigger guide 35.
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9. According to the Specification, the prior art cover 49 (48 in left-side
button) with through-holes 56, 57 (54, 55 in left-side button) is placed over
the trigger button 27 (Fig. 8; Spec. 3:24-31; 5:3-7; Figs. 8 & 11). The fitting
portions 40 and 41 “are inserted into the through-holes” of the cover 49
which is fitted on the trigger button (Spec. 5:3-7).

The Specification
10. The Specification describes its invention as a game controller
comprising “left and right fitting grooves extending up and down” located
on the “left and right sides of a back end surface of the trigger guide” (Spec.
6:22-25).
11. The Specification states:
. . . partition plates for partitioning the fitting groove up and
down are formed in the left and right fitting grooves of the
trigger guide, and the partition plates come into contact with the
upper ends of the left and right standing portions thereby to
position the trigger guide up and down.
(Spec. 7:21-27.)
12. Figure 2, reproduced below, shows a plan view of the trigger button and
trigger guide (Spec. 8:1-3).

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Figure 2 shows trigger guide 83, in place of the convention trigger
guide 35, with “left and right fitting grooves” 86 and 87 on the back end
surface of the trigger guide (Spec. 9:9-15).
13. As to the partition plates:
The left and right fitting grooves . . . 86, 87 extend up and down
and have semi-circular sections, and partition plates . . . 90, 91
which partition the left and right fitting grooves . . . 86, 87 up
and down.
(Spec. 9: 15-19.)
14. Figure 3, reproduced below, shows a front view of the trigger button of
Fig. 2 (Spec. 8:1-3).

Figure 3 shows fitting grooves 86, 87 with partition plate 90, 91.
15. Because of the above-described modifications to the trigger guide plate,
the Specification states that “[i]n the invention, the cover (reference
numerals 48, 49 in Fig. 8) used in the conventional example is not required.”
(Spec. 9:31-33).
16. The term “partition” is not defined in the Specification. We adopt its
ordinary meaning, as defined in a general purpose dictionary, to mean “a
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division into or distributed into portions” and “something that separates or
divides.” 2
Analysis
The Examiner rejected claims 6 and 7 as obvious in view of Figures
6-14 of the Specification, admitted to be prior art by Appellants. The
Examiner acknowledged that the trigger guide of the prior art did not have
“fitting grooves” on its back side, but found corresponding structures 40, 41
(also 38, 39) on trigger guide 35 (also 34) of the prior art (Ans. 4-5; FF7).
The Examiner reasoned that it would have been obvious to flip the guide
plate 35 “to change the direction of the applied force expected from the
standing portions, since it has been held that a mere reversal of the essential
working parts of a device involves only routine skill in the art.” (Ans. 4).
The Examiner also found that the “sides” of the prior fitting grooves 40, 41
(also 38, 39) served as “partition plates” since they contacted the standing
portions of the claimed controller as required by the claims (Ans. 6-7).
Appellants contend that the Examiner erred in finding it obvious to
have reversed the direction of the prior art guide plate (App. Br. 22). They
also contend that the prior art lacks partition plates as required by the claims
(id.).
In making an obviousness determination, the Examiner must find all
the claimed limitations in the prior art. In this case, the Examiner found that
the claimed “partition plate” was met by the sides of the fitting portion 40
and 41 in the prior art game controller (FF7-8; Ans. 4-5). The Examiner’s
reasoning was that the sides contacted the controller’s standing portions, and
apparently served the same purpose.

2 THE RANDOM HOUSE DICTIONARY 970 (Rev. 1982).
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The Examiner did not properly interpret claim 6. The claim requires
the controller to have “partition plates formed in the left and right fitting
grooves of the trigger guide partitioning the fitting grooves.” The partition
plate must “partition” the grooves. We have interpreted the term “partition”
to mean to separate or divide into portions (FF16), a meaning consistent with
how it is used in the Specification (FF13-15). Therefore, “partition plates
. . . partitioning the fitting grooves” would be interpreted by persons of
ordinary skill in the art to mean that the grooves are divided up by the plates.
The prior art fitting portions 40 and 41 (FF7-8) do not contain a plate that
divides the groove into parts. The “sides” define the shape of the fitting
portion, but they do not serve to divide it into parts. The Examiner’s
interpretation fails to account for an explicit limitation in the claim.
In addition to this, the fitting portions 40, 41 are not described in the
prior art as “grooves.” Rather, the prior figures depict them as structures
which project out and which are “inserted” into through-holes of a cover
(FF7-9). The fitting portions thus do not appear to be grooves as required by
the claims (“fitting grooves” in claim 6).

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CONCLUSION OF LAW & SUMMARY
The Examiner erred in finding that the prior art disclosed a trigger
guide with “fitting grooves” and “partition plates” as required by claim 6.
The obviousness rejection of claim 6, and dependent claim 7 which
incorporates all the limitations of claim 6, is reversed.

REVERSED

alw

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