Obviousness

Obviousness Analysis of US Patent 9,289,688

An analysis of the prior art cited in US Patent 9,289,688 ("the '688 patent") suggests that its claims would have been obvious to a Person Having Ordinary Skill in the Art (PHOSITA) at the time of the invention. The primary inventive concept of the '688 patent is a game controller featuring at least one additional, elongate control on its back, positioned for operation by the user's middle, ring, or little finger, where the control's inner surface is non-parallel to the controller body. This concept appears to be a combination of previously known elements to solve a recognized problem in the art.

The following combinations of prior art render the independent claims of the '688 patent obvious under 35 U.S.C. § 103.

Combination 1: GB2481633A (Burgess) in view of Ergonomic Design Principles

A strong argument for obviousness can be made using a single primary reference, GB2481633A to Simon David Burgess ("Burgess"), which was published on January 4, 2012. This reference is particularly relevant as Mr. Burgess is also a named inventor on the '688 patent.

• Base Reference: GB2481633A (Burgess)
  Burgess discloses the core novelty of the '688 patent: a games controller with additional buttons on its underside, specifically positioned to be operated by the user's middle fingers. The abstract of Burgess states, "A games console controller (1) comprises additional buttons (3,4) on the underside of the controller, in a position to be operated by the middle fingers of a user." This directly teaches the fundamental concept of relocating controls to the rear of the controller to free up the user's thumbs, which is the same problem the '688 patent purports to solve. Burgess, therefore, discloses the majority of the limitations in claim 1 of the '688 patent, including:

  • A games controller case with standard controls on the front and top.
  • The controller is shaped to be held by two hands with thumbs on top and index fingers on the front.
  • At least one additional control is located on the back/underside of the case.
  • This control is positioned to be operable by a middle, ring, or little finger.

• Missing Elements and Motivation to Modify
  The primary elements from claim 1 of the '688 patent not explicitly detailed in the figures of Burgess are the "elongate member" shape and the specific geometric limitation that the "second surface" of this member is "non-parallel" to the controller body.

  However, modifying the simple button actuators shown in Burgess into elongate, paddle-like members with non-parallel surfaces would have been an obvious design choice for a PHOSITA focused on improving ergonomics and usability.

  • Motivation: A PHOSITA would have been motivated to modify the basic button design in Burgess to accommodate different hand sizes and finger positions, a well-known challenge in controller design. Making the actuator an "elongate member" (i.e., a paddle) rather than a simple round button provides a larger surface area for activation, making it easier for users with different hand sizes or grip styles to use the control comfortably and without repositioning their hands. This is a predictable improvement.
  • Non-Parallel Surface: The limitation requiring the actuator's second surface to be non-parallel to the controller body is a direct result of applying basic ergonomic principles. Angling the surface of a control relative to its mounting point is a common technique to make it easier to actuate, provide better tactile feedback, and guide a user's finger. A PHOSITA would have found it obvious to cant or angle the underside of the elongate paddle to better align with the natural arcing motion of a user's finger as it squeezes or presses the control. This modification would make the control more comfortable and responsive, a clear and predictable benefit.

Therefore, the combination of the rear-button concept from Burgess with routine ergonomic and industrial design principles would have yielded the invention claimed in the '688 patent.

Combination 2: EP2479636A2 (Sony) in view of US20120322553A1 (Ironburg)

An alternative argument for obviousness can be made by combining a reference that teaches rear-mounted controls on a handheld device with a reference that teaches mechanical paddle-style actuators.

• Base Reference: EP2479636A2 to Sony Computer Entertainment Inc. ("Sony")
  Published on July 25, 2012, Sony discloses a "portable electronic device," such as a gaming device, that features a "rear touch panel." This explicitly teaches the concept of user input controls on the back of a handheld device, intended to be operated by the fingers that are gripping the device. This provides a foundation for a controller with rear-input capabilities.

• Secondary Reference: US20120322553A1 to Ironburg Inventions Ltd. ("Ironburg '553")
  Published on December 20, 2012, this application (from the same assignee as the '688 patent) discloses a controller with removable and repositionable paddle levers on the rear of the controller. These paddles are explicitly described as elongate actuators.

• Motivation to Combine: A PHOSITA would have been motivated to combine the teachings of Sony and Ironburg '553 for a clear reason: to improve performance and user experience. While Sony's rear touch panel allows for rear input, touch panels are widely recognized as lacking the tactile feedback of physical, mechanical buttons. For many games, particularly fast-paced action or shooting games, the distinct click and travel of a mechanical switch is superior to a flat touch surface.

  A PHOSITA, seeing the rear input area taught by Sony, would be motivated to replace the non-tactile touch panel with the mechanical, elongate paddle actuators taught by Ironburg '553 to provide gamers with improved tactile response. This combination would predictably result in a controller with elongate mechanical members on the back for rear-finger input. Adding an ergonomic, non-parallel angle to the surface of these paddles, as discussed previously, would be a further obvious step to enhance comfort and ease of use. This combination directly arrives at the subject matter of claim 1 of the '688 patent.