Obviousness

Obviousness Analysis of US Patent 9,089,770 under 35 U.S.C. § 103

This analysis evaluates whether the invention described in independent claim 1 of U.S. Patent 9,089,770 would have been obvious to a "person having ordinary skill in the art" (PHOSITA) at the time the invention was made, considering the prior art cited during the patent's prosecution. An invention is considered obvious if the differences between the invention and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.

The central features of Claim 1 are a standard video game controller form factor with the addition of two "back controls" that are "elongate members," each extending "along at least half" the vertical distance of the controller's back, as measured along the member's longitudinal axis.

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Primary Obviousness Combination

Combination of US Design Patent D623,649 S1 (hereinafter '649) with the knowledge of a Person Having Ordinary Skill in the Art (PHOSITA).

This combination argues that the claimed invention is an obvious modification of the controller design shown in the '649 patent.

1. What '649 Discloses: The '649 design patent teaches nearly all the elements of Claim 1.

   • It discloses a video game controller with an outer case, a front and back, top and bottom edges, and two side handles, satisfying the basic structural requirements of Claim 1.
   • Crucially, Figure 2 of '649 clearly depicts two back controls located on the rear of the handles. These controls are undeniably "elongate members," appearing as paddle-like levers.

2. The Missing Element: The only element not explicitly and definitively disclosed in the '649 patent is the precise length requirement of Claim 1: that the elongate members must extend "along at least half" of the distance between the top and bottom edge. The paddles in '649 are elongate, but whether they meet this specific proportional threshold is a matter of interpretation from the drawings.

3. Motivation to Modify '649: A PHOSITA, starting with the controller design in '649, would have been motivated to extend the length of the back paddles to at least half the height of the controller for well-understood and predictable reasons:

   • Accommodating Different Hand Sizes: The primary motivation for lengthening the paddles is to improve ergonomics and accessibility for a wider range of users. A longer paddle allows players with different hand sizes (e.g., children and adults) to comfortably reach and actuate the control without needing to reposition their hands.
   • Allowing for Multiple Finger Placements: A longer paddle provides a larger activation area, enabling a user to actuate the control with different fingers (e.g., middle or ring finger) or different parts of their finger. This increases comfort and reduces fatigue during extended gameplay, a well-known goal in controller design. The specification of the '770 patent itself confirms this motivation, stating the elongate shape "provides that different users having different size hands can engage with the paddles in a comfortable position" (Col. 4, lines 37-40).
   • Predictable Result: Lengthening a control surface to improve ergonomic accessibility is a simple design expedient, not a source of non-obviousness. The result—that more people can use the controller more comfortably—is entirely predictable. There would have been no technical challenge or unexpected outcome from making this modification.

Conclusion: Because the '649 patent discloses elongate back paddles on a standard controller, the only novel feature of Claim 1 is a specific length limitation. Modifying the length of the paddles shown in '649 to meet this limitation would have been an obvious design choice for a PHOSITA seeking to improve the known ergonomic function of such controls. Therefore, Claim 1 is obvious over the '649 patent in view of the general knowledge and design principles available to a PHOSITA.

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Secondary Obviousness Combination

Combination of US 7,753,786 (hereinafter '786) or US 2008/0261695 (hereinafter '695) with US Design Patent D623,649 S1 (hereinafter '649).

This combination argues that it would have been obvious to combine the concept of back-mounted controls from '786 or '695 with the specific paddle-like implementation shown in '649.

1. What '786 and '695 Disclose: Both the '786 patent (Mitsumi) and the '695 application (Coe) teach the foundational concept of placing controls on the back of a controller's handles. The stated motivation is to allow the user's middle or ring fingers to perform actions, thus freeing the thumbs from having to leave the analog sticks to press face buttons. This addresses the exact problem outlined in the background of the '770 patent. However, these references disclose the back controls as small, discrete buttons.

2. Problem with the '786/'695 Implementation: A PHOSITA would recognize that small buttons on the back of a controller could be difficult to locate and actuate without tactile feedback or adjusting one's grip, potentially undermining the goal of seamless operation. This presents a problem: how to best implement the useful idea of back-mounted controls.

3. '649 as a Solution: The '649 design patent provides a known solution to this implementation problem. It teaches an alternative form for a back-mounted control: an "elongate member" or paddle. A PHOSITA would immediately recognize the advantages of this shape over a small button. The paddle is easier to find and activate, requires less precise finger movement, and offers a larger target.

4. Motivation to Combine: A PHOSITA, motivated by the teachings of '786 or '695 to add controls to the back of a standard controller, would have looked to known design alternatives for the actuator itself. The paddle design shown in '649 would have been an obvious and superior choice to the simple button. The motivation to combine would be to take the functional concept from '786 or '695 and implement it using the more ergonomic and effective actuator design shown in '649.

5. Final Modification for Length: Having combined these references to arrive at a controller with elongate back paddles, the final step to the claimed invention is identical to that in the primary argument above. A PHOSITA would be motivated to make the paddles sufficiently long (i.e., "at least half" the height) to further enhance the ergonomic benefits and accommodate a wider range of users, which is a predictable and obvious optimization.

Conclusion: The concept of adding rear-mounted controls was known ('786 and '695). The use of elongate paddles as rear-mounted controls was also known ('649). Combining these teachings to create a controller with elongate rear paddles would have been obvious. The final claimed feature—a specific length for those paddles—is an obvious, ergonomic-driven design choice with a predictable result.