YAZAKI CORPORATION

Patent Trials and Appeals Board

Mar 4, 2020

14707677 - (D) (P.T.A.B. Mar. 4, 2020)

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.
14/707,677 05/08/2015 Jin Watanabe 6006-0172 4404
39083 7590 03/04/2020
KENEALY VAIDYA LLP
3000 K Street, N.W.
Suite 200
Washington, DC 20007
EXAMINER
REISNER, NOAM S
ART UNIT PAPER NUMBER
2852
NOTIFICATION DATE DELIVERY MODE
03/04/2020 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):
avaidya@kviplaw.com
uspto@kviplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIN WATANABE
Appeal 2019-002458
Application 14/707,677
Technology Center 2800
Before LINDA M. GAUDETTE, LILAN REN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 2. See Final Act. 5, 7. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 “Yazaki Corporation,
a corporation of Japan.” Appeal Br. 4.
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CLAIMED SUBJECT MATTER
“The present invention relates to a method of determining whether
there presents a possibly-unused electric wire among electric wires of a wire
harness, and a program.” Spec. 1:14–16. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for assembling a plurality of wire harnesses
comprising:
a forming step of forming the plurality of wire harnesses
from a plurality of electric wires;
a formation step of forming a plurality of patterns by
assigning each of the wire harnesses with a part number based on
each of divided regions into which a space of a vehicle is divided;
a classification step of classifying for each pattern a group
of electric wires of each wire harness assigned to a first divided
region of the divided regions as necessary electric wires having
a connection counterpart in a second divided region adjacent to
the first divided region among the divided regions, and
classifying for each pattern at least one of the electric wires of
the wire harness as an extra electric wire not having a connection
counterpart in the second divided region;
a determination step of determining as a possibly-unused
electric wire an electric wire that is classified as the extra electric
wire in any one of the patterns and classified as the necessary
electric wire in any one of the remaining patterns, and
determining as not a possibly-unused electric wire that an electric
wire that is classified as the extra electric wire in entirety for each
of the patterns;
preserving each electric wire determined as a possibly-
unused electric wire in each of the wire harnesses; and
removing each electric wire determined as not a possibly-
unused electric wire from each of the wire harnesses.
Claims Appendix (Appeal Br. 22).
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REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Sasaki US 2012/0262185 A1 Oct. 18, 2012
Bimmer Forums
(“Bimmer”)
Non-patent literature Jan. 7, 2012

REJECTION
Claims 1 and 2 are rejected under pre-AIA 35 U.S.C. § 101 as being
patent ineligible. Final Act. 5.
Claims 1 and 2 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Sasaki in view of Bimmer. Final Act. 7.

OPINION
Section 101 Rejection
Legal Framework
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, our
inquiry focuses on the Supreme Court’s two-step framework, described in
Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
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that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
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attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citations omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Office recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”), 84 Fed. Reg. 50
updated by USPTO, October 2019 Update: Subject Matter Eligibility
(available at https://go.usa.gov/xp88j); see also October 2019 Patent
Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct. 18 2019) (notifying
public that October update was available). Under that guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental
economic practice, or mental processes); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See generally Memorandum.
Analysis
Applying the guidance set forth in the Memorandum, we conclude
that claims 1 and 2 are patent eligible under § 101.
Revised Step 2A, Prong One–Directed to a Judicial Exception
The Memorandum instructs us first to determine whether each claim
recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The
Memorandum identifies three judicially-excepted groupings: (1)
mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. Id. at 52.
The Examiner finds that the claims are directed to the abstract idea of
a mental process without significantly more. Final Act. 5; see also Ans. 5.
Appellant argues, on the other hand, that the recited steps are directed to
“physical manipulation of electric wires” and therefore are not abstract.
Appeal Br. 13.
We agree with Appellant that claim 1 recites actions applied to a
physical apparatus and therefore is not directed to a mental process. For
example, the recited step of “forming the plurality of wire harnesses from a
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plurality of electric wires” requires the use of electric wires to produce the
apparatus of a wire harness. The recited step of “preserving each electric
wire determined as a possibly-unused electric wire in each of the wire
harnesses” requires an action that results in a particular structure of the wire
harness (i.e., a wire harness having certain wires). The recited step of
“removing each electric wire determined as not a possibly-unused electric
wire from each of the wire harnesses” requires an action to remove certain
wires that results in a different structure of the wire harness (i.e., a wire
harness without certain wires).
Given that claim 1 is a method claim reciting various physical actions
performed to produce the apparatus of a wire harness, we conclude that
claim 1 (and claim 2 which depends from claim 1) is not directed to the
abstract idea of a mental process. Based on the foregoing that claims 1 and
2 are not directed to a judicial exception, we need not proceed to the
remaining portions of the section 101 eligibility analysis.
The rejection of claims 1 and 2 under section 101 is reversed.
Section 103 Rejections
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”)). After having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that reversible error has been identified,
and we affirm the Examiner’s § 103 rejections for the reasons expressed in
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the Final Office Action and the Answer. We add the following primarily for
emphasis.
In rejecting claim 1 under section 103, the Examiner acknowledges
that Sasaki does not teach or suggest the steps of “determining as a possibly-
unused electric wire . . . ,” “preserving each electric wire determined as a
possibly-unused electric wire in each of the wire harnesses,” and “removing
each electric wire determined as not a possibly-unused electric wire from
each of the wire harnesses.” Final Act. 9. The Examiner accordingly cites
Bimmer for the teaching. Id. More specifically, the Examiner finds that
Bimmer teaches color coding wires to indicate whether they are necessary,
possibly unused, or unused. Id. at 9–10 (citing various portions of Bimmer
for the teaching of categorizing wires as necessary, possibly-unused, and
unused); Ans. 9 (repeating the finding that Bimmer teaches “marking wires
black for necessary, red for unused, and yellow for possibly-unused”). The
Examiner further finds that Bimmer also teaches the removal of unused
wires which “implicitly discloses preserving the possibly-unused wires, as
there is no mention of removing them.” Final Act. 10.
Appellant does not disagree with the Examiner’s finding that Bimmer
teaches a color coding system to categorize wires as necessary, possibly-
unused, and unused. See Appeal Br. 19–20; see also Reply Br. 7
(acknowledging that “[a]lthough BimmerForums discloses that yellow tags
are initially applied to certain wires” and arguing only that “BimmerForums
clearly discloses that all yellow tagged wires are subsequently used or
removed”) (emphases removed). Appellant’s sole argument is that Bimmer
does not teach or suggest the “preserving” step because (1) Bimmer
“removes all of the unused wires, regardless of whether the wire has the
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interim marking of yellow tape” and (2) “the yellow wires are ultimately
tagged as used or unused, and the unused wires are removed.” Appeal Br.
19, 20.
We are not persuaded by the argument because it is incommensurate
in scope with claim 1. As the Examiner points out, claim 1 is an open-ended
claim and does not exclude an additional step of removing the possibly-
unused wires. Ans. 9. Claim 1 requires “preserving each electric wire
determined as a possibly-unused electric wire” but does not require such
preserving to be maintained over a specific duration. The Examiner’s
finding that Bimmer teaches to “use the diagram to investigate them [the
yellow taped wires] later” (Bimmer pg. 2) which corresponds to the
“preserving” step recited in claim 1 is therefore supported by the record.
Appellant’s argument that the yellow wires “are ultimately . . . removed”
does not address limitations recited in claim 1 and does not identify
reversible error in the Examiner’s findings in support of the rejection.
Appeal Br. 20.
We sustain the rejection of claim 1 under section 103 based on Sasaki
and Bimmer. Appellant does not argue separately the rejection of claim 2
and it is sustained as well. Appeal Br. 202; see 37 C.F.R. § 41.37(c)(1)(vii).

2 We note that Appellant requests the rejection of “dependent claims 2-16
under 35 U.S.C. § 103(a)” be reversed. Appeal Br. 20, 21 (stating that
claims “1-16” are patentable. These statements are inconsistent with the
Claims Appendix (Appeal Br. 22–23), the “Status of Claims” (id. at 4) and
“Grounds of Rejection To Be Reviewed on Appeal” (id. at 5). We consider
these references to claims that are not before us, namely claims 3–16,
typographical errors.
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CONCLUSION
The Examiner’s rejection of claims 1 and 2 under section 101 is
reversed.
The Examiner’s rejection of claims 1 and 2 under section 103 over
Sasaki and Bimmer is affirmed.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2 101 Patent eligibility 1, 2
1, 2 103 Sasaki, Bimmer 1, 2
Overall
Outcome:

1, 2

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED