Ex Parte Kawaguchi et al

Patent Trial and Appeal Board

Jan 17, 2017

13231218 (P.T.A.B. Jan. 17, 2017)

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
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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,
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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)
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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
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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)
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