Ex Parte Sato et al

Patent Trial and Appeal BoardSep 27, 2012

11755076 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte HISASHI SATO, YUICHI ISHIDA, MASAAKI ISHIGURO, and KAZUAKI NAKAMURA ____________________ Appeal 2011-007354 Application 11/755,076 Technology Center 2800 ____________________ Before: MARC S. HOFF, CARLA M. KRIVAK, and THOMAS S. HAHN, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007354 Application 11/755,076 2 Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellants’ claimed invention is an electrical connection box for housing a circuit board on which an electrical circuit such as a power supply circuit is mounted. Specification 1. Independent claim 1, reproduced below, is illustrative. 1. An electrical connection box, comprising: a printed circuit board, on which an electrical component is mounted; and a case, covering the circuit board; wherein the circuit board includes: a plate-like metal core; an insulation portion, covering both surfaces of the metal core; a circuit pattern made of copper foil, formed on the insulation portion; an electrical connection portion which is electrically connected to the electrical component and the circuit pattern, and electrically insulated from the metal core; and a heat radiation portion which is provided on the metal core to be exposed from the case, and electrically insulated from the electrical connection portion. Appeal 2011-007354 Application 11/755,076 3 REFERENCES and REJECTION The Examiner rejected claims 1-7 under 35 U.S.C. § 103(a) based upon the teachings of Kasai (US 6,315,578 B1, Nov. 13, 2001) in view of Hosoe (US 6,796,808 B2, Sep. 28, 2004). ISSUE Appellants argue, inter alia, that neither reference teaches a heat radiation portion on a printed circuit board, provided on the metal core, and electrically insulated from the electrical connection portion (App. Br. 11). Appellants’ arguments present us with the following issue: Does the combination of Kasai and Hosoe teach or fairly suggest a printed circuit board having a heat radiation portion provided on the metal core, which is electrically insulated from the electrical connection portion? PRINCIPLES OF LAW Section 103(a) forbids issuance of a patent when ‘the differences between the subject matter sought to be patented 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 to which said subject matter pertains.’ KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407, (“While the sequence of these questions might be reordered in Appeal 2011-007354 Application 11/755,076 4 any particular case, the [Graham] factors continue to define the inquiry that controls.”) ANALYSIS We agree with Appellants that the Examiner’s proposed combination fails to teach all the elements of the claimed invention (Ans. 12). We have reviewed Kasai and Hosoe, and we find that neither reference teaches a heat radiation portion which is provided on the metal core to be exposed from the case, and electrically insulated from the electrical connection portion. Tabs 17a of Kasai are provided for alignment with mount holes formed in lower casing 11 or upper casing 12 (Kasai col. 7, ll. 19-21). Kasai does not disclose that these tabs are for the purpose of radiating heat. Kasai further fails to teach that tabs 17a are electrically insulated from the “electrical connection portion” of Kasai. The extent of Hosoe’s teaching of a printed circuit board that is relied upon by the Examiner is column 2, lines 38-45 of Hosoe. This passage states only that Hosoe’s stacked boxes are provided with an internal circuit including a printed circuit board inside a case including a lower case and an upper case (Hosoe col. 2, ll. 38-45). The Examiner cites no teaching in Hosoe of any heat radiation portion of its printed circuit board, let alone a heat radiation portion electrically insulated from the electrical connection portion. Accordingly, we find that the combination of Kasai and Hosoe fails to teach all the limitations of claims 1-7. We will not sustain the Examiner’s § 103 rejection. Appeal 2011-007354 Application 11/755,076 5 CONCLUSION The combination of Kasai and Hosoe does not teach or fairly suggest a printed circuit board having a heat radiation portion provided on the metal core, which is electrically insulated from the electrical connection portion. DECISION The Examiner’s decision rejecting claims 1-7 is reversed. REVERSED tkl