NINTENDO CO., LTD.

Patent Trials and Appeals Board

Apr 30, 2021

2020006088 (P.T.A.B. Apr. 30, 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.
15/725,601 10/05/2017 Shigetoshi GOHARA RYM-723-4556 5637
27562 7590 04/30/2021
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
MCCLELLAN, JAMES S
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/30/2021 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 SHIGETOSHI GOHARA
____________

Appeal 2020-006088
Application 15/725,6011
Technology Center 3700
____________

Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

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.)
Appeal 2020-006088
Application 15/725,601

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CLAIMED SUBJECT MATTER
Appellant’s invention “relates to a game system with a haptic
feedback function.” (Spec. ¶ 2.)
Claims 1, 7, 8, 14, 15, 16, 17, and 18 are the independent claims on
appeal. Claim 1 is illustrative. It recites:
1. A game system comprising:
a controller;
a vibrator configured to vibrate with a specified intensity
and;
at least one processor configured to:
enable a player character to move within a virtual
space based on operation of the controller; and
detect a contact between the player character and an
uninvadable obstacle object, and cause the vibrator to
vibrate with an intensity varying based on a traveling
direction of the player character with respect to the
obstacle object in a case where the operation of the
controller directs the player character toward the obstacle
object while the contact is continued.

REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 102(a)(1) as anticipated
by Carlson (US 6,283,859 B1, iss. Sept. 4, 2001).

ANALYSIS
“[A]n invention is anticipated if the same device, including all the
claim limitations, is shown in a single prior art reference. Every element of
the claimed invention must be literally present, arranged as in the claim.”
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
If the prior art reference does not expressly set forth a
particular element of the claim, that reference still may anticipate
Appeal 2020-006088
Application 15/725,601

3
if that element is “inherent” in its disclosure. To establish
inherency, the extrinsic evidence “must make clear that the
missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by
persons of ordinary skill.” Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749
(Fed.Cir.1991). “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not sufficient.”
Id. at 1269, 948 F.2d 1264, 20 U.S.P.Q.2d at 1749 (quoting In re
Oelrich, 666 F.2d 578, 581, 212 U.S.P.Q. 323, 326
(C.C.P.A.1981)).

In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
The Examiner finds that claim 1 is anticipated by Carlson. (Non-Final
Action 2–3.) In relevant part, the Examiner finds that “[i]n column 16,
Carlson discloses various force feedback sensations, including jarring
vibrations. It is the Examiner’s position that when a racecar continuously
steers into a wall it would cause vibrations.” (Answer 7.)
Carlson discloses
a haptic interface system, also known as a force feedback system,
compris[ing] a motor for supplying actuating energy and a
magnetically-controllable device that transfers the actuating
energy into force feedback sensations. The magnetically-
controllable device contains a magnetically-controllable medium
beneficially providing variable resistance forces in proportion to
the strength of an applied magnetic field.

(Carlson, Abstract.) Carlson discloses that “the operator’s manipulations of
the haptic interface device are affected by the applied resistance forces, or
force feedback, and the applied resistance forces are dependent upon the
manipulations of the operator.” (Id. at col. 16, ll. 11–14.) Figure 2 of
Carlson is reproduced below.

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Application 15/725,601

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Figure 2 “is a perspective view of one embodiment of a haptic interface unit
according to the [Carlson] invention.” (Id., at col. 6, ll. 20–21.)
Carlson discloses that the
haptic interface system 10 imparts force resulting in active force
feedback sensations to operator 12 through haptic interface
device 18 to simulate the feel, for example, of jolting blasts, rigid
or soft surfaces, viscous liquids, increased gravity, compliant
springs, jarring vibrations, grating textures, heavy masses,
gusting winds, and any other physics phenomenon that can be
represented mathematically and computed by computer
system 20.

(Id. at col. 16, ll. 58–65.)
For example, if that computer system 20 is running a race
car driving interactive program, and operator 12 attempts to
move haptic interface device 18 in a direction that steers the race
car to deflect off of a non-destructible wall, the computer system
controls magnetically-controllable device 14 to transfer energy
from motor 16 to impart an impulse force to haptic interface
device 18 upon impacting the wall. Additionally, as long as
operator 12 continues to steer into the wall, magnetically-
controllable device 14 and motor 16 provide resistance forces
equal to or greater than the force applied to the haptic interface
device 18 by the operator to simulate the immovable, non-
destructible feel of the wall.

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Application 15/725,601

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(Id. at col. 7, ll. 38–49.) In short, Carlson discloses imparting an impulse
force as well as resistance forces to a haptic interface device.
With regard to the race car example, the Examiner finds that
Carlson discloses that “as long as operator 12 continues to steer
into the wall, magnetically-controllable device 14 and motor 16
provide resistance forces equal to or greater than the force
applied to the haptic interface device (18) by the operator to
simulate the immovable, non-destructible feel of the wall”
(emphasis by the Examiner). That is, when an operator
continuously steers a racecar into a wall, the car will continue to
move with some speed.

(Answer 8.) The Examiner finds that “Carlson provides a vibration variable
intensity that is dependent on speed and based on the operation of the
controller assuming that there is no obstacle object because the racecar is
still permitted to continuously be steered into the wall.” (Id. (italicized
emphasis added).)
Appellant argues that “although the opposing forces generated by
Carlson are ‘haptic’ in nature, they do not appear to be vibrations. Instead,
they are ‘opposing forces’ that apparently make the wheel more or less
difficult to turn depending on the specific situation encountered.” (Appeal
Br. 14–15.)
As noted above, Carlson discloses imparting an impulse force as well
as resistance forces to the haptic interface device. With respect to the
resistance forces, Carlson’s system “provides a signal that directs
magnetically-controllable device 14 to provide a variable amount of
resistance that transfers energy from motor 16 to provide a force feedback
that opposes the force applied by operator 12 to haptic interface device 18.”
(Carlson, col. 7, ll. 52–56.) With respect to the impulse force, Carlson’s
Appeal 2020-006088
Application 15/725,601

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system “imparts force resulting in active force feedback sensations to
operator 12 through haptic interface device 18 to simulate the feel, for
example, of jolting blasts, . . . jarring vibrations, . . . and any other physics
phenomenon that can be represented mathematically and computed by
computer system 20.” (Id. at col. 16, ll. 58–65.)
One might infer that the “jarring vibrations” and “impulse force” vary
based on the nature of the impact, e.g., varying based on a traveling direction
of a race car with respect to an obstacle object, but the Examiner does not
indicate where this is expressly set forth in Carlson. (See, e.g., Answer 8
(“[T]he Examiner believes that a vibration force feedback would be used to
simulate the sensation of continuously steering a racecar into a wall.”).)
And although the cited portions of Carlson expressly disclose providing
varying resistance forces as long as the operator continues to steer into the
wall (Carlson, col. 7, ll. 38–49), the cited portions do not expressly disclose
that the impulse force is a vibration vibrating with varying intensity.
With regard to the vibrator itself recited in claim 1, the Examiner
cites to element 18 of Carlson, i.e., “a haptic interface device such as a
steering wheel.” (See Non-Final Action 2; see also Carlson, col. 6, ll. 36–37
& Fig. 2.) The Examiner does not clearly indicate what element(s) in
Carlson would cause the interface device, e.g., the steering wheel, to vibrate
with varying intensity. Nor does the Examiner sufficiently explain why
Carlson’s recitation of simulating “jarring vibrations” makes clear that this
would be recognized by a person of ordinary skill in the art as causing a
vibrator to vibrate with a varying intensity, and more specifically, with an
intensity varying based on a traveling direction of a player character with
respect to an uninvadable obstacle object.
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Application 15/725,601

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Therefore, we will reverse the rejection of claim 1 as anticipated by
Carlson. Independent claims 7, 8, and 14–18 contain similar language. For
the reasons discussed, we will reverse the rejection of these claims, and of
dependent claims 2–6, 9–13, 19, and 20.
CONCLUSION
The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 102(a)(1)
is reversed.
Specifically:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 102(a)(1) Carlson 1–20

REVERSED