Ex Parte Kawaguchi et alDownload PDFPatent Trial and Appeal BoardJan 17, 201713231218 (P.T.A.B. Jan. 17, 2017) Copy Citation 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. 13/231,218 09/13/2011 Kiyofumi KAWAGUCHI P40164 6276 7055 7590 01/19/2017 GREENBLUM & BERNSTEIN, P.L.C. 1950 ROLAND CLARKE PLACE RESTON, VA 20191 EXAMINER FIGUEROA, FELIX O ART UNIT PAPER NUMBER 2833 NOTIFICATION DATE DELIVERY MODE 01/19/2017 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): gbpatent@gbpatent.com greenblum.bernsteinplc@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KIYOFUMI KAWAGUCHI, OSAMU AOKI, SHUNJI TAGA, and SHUNSUKE AMAGAI Appeal 2015-007520 Application 13/231,218 Technology Center 2800 Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and AVELYN M. ROSS Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim an electrical junction box. Claim 1 is illustrative: 1. An electric junction box comprising: an electric junction box main body composed of a first case and a second case combined with each other, and including a connection housing open to a side of the electric junction box main body orthogonal to a combining direction of the first case and the second case, the connection housing configured to receive a connector Appeal 2015-007520 Application 13/231,218 inserted inside the connection housing from an opening of the connection housing; and a bus bar housed in the electric junction box main body, and including a connection terminal integrally provided with the bus bar, the connection terminal disposed in the connection housing and projecting toward an opening direction of the connection housing, wherein the first case is integrally provided with the connection housing open to the side of the first case; the second case is integrally provided with a support base projecting toward the first case and facing inside the connection housing from a window provided in the connection housing; and the bus bar included in the connection terminal disposed inside the connection housing is provided along the support base and includes a perpendicular portion which extends orthogonally to a projecting direction of the connection terminal, wherein the perpendicular portion of the bus bar is interposed between the support base and the first case, to be positioned in the projecting direction of the connection terminal, and a flat plate portion of the bus bar that extends parallel to the projecting direction is interposed between the support base and the first case to be positioned in a perpendicular direction orthogonal to the projecting direction of the connection terminal. Claims 1—10 stand rejected under 35 U.S.C. § 103 over Oda in view We reverse the rejection and, under 37 C.F.R. § 41.50(b), enter a new rejection of claims 1—10 under 35 U.S.C. § 112, second paragraph. Oda Sasaki The References US 6,870,097 B2 Mar. 22, 2005 US 7,364,438 B2 Apr. 29, 2008 The Rejection of Sasaki. OPINION 2 Appeal 2015-007520 Application 13/231,218 New ground of rejection Claims 1—10 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellants regard as the invention. The Appellants’ sole independent claim, i.e., claim 1, requires an electrical junction box comprising a bus bar having a perpendicular portion to be positioned in the projecting direction of a connection terminal. The Appellants’ bus bar (18a)’s perpendicular portion (88a), however, is to be positioned orthogonal to the projecting direction (horizontal in Figs. 1 and 9) of the connection terminal (24a) (Spec. 136). That claim also requires that the bus bar has a flat plate portion to be positioned in a perpendicular direction orthogonal to the projecting direction of the connection terminal. However, the Appellants’ bus bar (18a)’s flat plate portion (90a) is to be positioned in a direction parallel to the projecting direction of the connection terminal (24a) (id.). Thus, the meaning of the Appellants’ claim 1 and its dependent claims 2—9 is unclear. In some instances it may be impossible to determine whether claimed subject matter is anticipated by or would have been obvious over references because the claims are so indefinite that considerable speculation and assumptions would be required regarding the meaning of terms employed in the claims with respect to the scope of the claims. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). In other instances, however, it is possible to make a reasonable, conditional interpretation of claims adequate for the purpose of resolving patentability issues to avoid piecemeal appellate review. In the interest of administrative and judicial economy, this course is appropriate wherever reasonably possible. See Ex parte Saceman, 27 USPQ2d 1472, 3 Appeal 2015-007520 Application 13/231,218 1474 (Bd. Pat. App. & Int. 1993); Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984). In the present case we consider such a reasonable, conditional interpretation to be possible. This interpretation is that the relevant portion of the Appellants’ claim 1 recites that “the perpendicular portion of the bus bar is interposed between the support base and the first case, to be positioned orthogonal to the projecting direction of the connection terminal, and a flat plate portion of the bus bar that extends parallel to the projecting direction is interposed between the support base and the first case to be positioned in a direction parallel to the projecting direction of the connection terminal.” Rejection under 35 U.S.C. §103 We need address only the sole independent claim, i.e., claim 1. As indicated above, that claim requires an electrical junction box comprising a bus bar having both 1) a perpendicular portion to be positioned orthogonal to the projecting direction of the connection terminal, and 2) a flat plate portion to be positioned in a direction parallel to the projecting direction of the connection terminal. Oda discloses an electrical junction box (10) comprising a circuit body (15 A) including bus bars (15) arranged in a pattern on an upper insulation plate (13), the distal end of each bus bar (15) being bent upwardly toward an upper casing member (11) to form a terminal portion (15a) (col. 3, 11. 18-23; Fig. 1). Sasaki discloses an electrical connection box comprising bus bars (12) bonded to the back surface of a circuit board (11), each bus bar (12) having a terminal portion (14) including 1) a support portion (14a) rising substantially perpendicularly to the circuit board (11), and 2) a connecting portion (14b) 4 Appeal 2015-007520 Application 13/231,218 extending from the rising end of the support portion (14a) substantially perpendicularly to the support portion (14a) and substantially parallel to the circuit board (11), such that the terminal portion (14) has a substantially L-shaped side view (col. 2,11. 36—50; Fig. 2). The Examiner concludes that “[i]t would have been obvious to a person of ordinary skill in the art at the time the invention was made to use [in Oda’s electrical junction box] a busbar with a perpendicular portion interposed between the support base and the first case, as taught by Sasaki, in order to help secure the busbar in the projection direction” (Final Act. 3; Ans. 5). Establishing a prima facie case of obviousness of an invention comprising a combination of known elements requires “an apparent reason to combine the known elements in the fashion claimed” KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The configuration of Sasaki’s electrical connection box requires the bus bar (12)’s terminal portion (14) to have, between the circuit board (11) and the connecting portion (14b), a support portion (14a) substantially perpendicular to the circuit board (11) and the connecting portion (14b) (Fig. 2). Oda’s bus bar (15)’s terminal portion (15a), however, extends upwardly from the upper insulation plate (13) and is supported by that plate (col. 3,11. 18—23; Fig. 1). The Examiner does not address the differences between Oda’s and Sasaki’s electrical junction box structures and establish that regardless of those differences, the reason relied upon by the Examiner for including Sasaki’s perpendicularly-oriented support portion (14a) between Oda’s insulation plate (13) and bus bar (12)’s terminal portion (15a), i.e., helping to secure the bus bar in the projection direction 5 Appeal 2015-007520 Application 13/231,218 (Final Act. 3; Ans. 5), would have been apparent to one of ordinary skill in the art. Accordingly, we reverse the rejection. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . DECISION/ORDER The rejection of claims 1—10 under 35 U.S.C. § 103 over Oda in view of Sasaki is reversed. A new ground of rejection has been entered under 37 C.F.R. § 41.50(b). It is ordered that the Examiner’s decision is reversed. REVERSED: 37 C.F.R, $ 41.50(b) 6 Copy with citationCopy as parenthetical citation