Yazaki Corporation

Patent Trials and Appeals BoardAug 5, 2020

14812540 - (D) (P.T.A.B. Aug. 5, 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. 14/812,540 07/29/2015 Tatsuya OGA Q221420 5285 65565 7590 08/05/2020 SUGHRUE-265550 2000 PENNSYLVANIA AVE. NW SUITE 900 WASHINGTON, DC 20006 EXAMINER TSO, STANLEY ART UNIT PAPER NUMBER 2847 NOTIFICATION DATE DELIVERY MODE 08/05/2020 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): PPROCESSING@SUGHRUE.COM SUGHRUE265550@SUGHRUE.COM USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TATSUYA OGA and HIDEOMI ADACHI ____________ Appeal 2019-004863 Application 14/812,540 Technology Center 2800 ____________ Before N. WHITNEY WILSON, DEBRA L. DENNETT, and LILAN REN, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1 and 3–14 of Application 14/812,540, which constitute all the claims pending in this application. A telephonic 1 In our Decision, we refer to the Specification (“Spec.”) of Application No. 14/812,540 filed July 29, 2015 (the “’540 App.”); the Final Office Action dated Oct. 31, 2018 (“Final Act.”); the Appeal Brief filed Feb. 28, 2019 (“Appeal Br.”); the Examiner’s Answer dated Apr. 5, 2019 (“Ans.”); and the Reply Brief filed June 4, 2019 (“Reply Br.”). 2 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. Appeal Br. 2. Appeal 2019-004863 Application 14/812,540 2 hearing was held on July 22, 2020, a transcript of which is part of the record. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. The subject matter of the invention relates to wire harnesses that include one or more electrical pathways. Spec. 1, ll. 10–11. In a traditional wire harness in a hybrid or electric vehicle, expensive electrical pathways that have flexure resistance are used from one harness terminal to another harness terminal due to vibration that may be transmitted through an external high voltage device. Spec. 1, ll. 21–24. According to Applicant, vibration from the side of an inverter unit is transmitted to the wire harness while the vehicle is running, and particularly affects fixing points nearest to a shielding connector for the inverter. Spec. 7, ll. 11–16. The wire harness can be constructed so that high flexure resistance is required only in the part from the shielding member to a fixing member. Spec. 7, ll. 16–20. The invention seeks to reduce the cost by having only the necessary part of the electrical pathway have high flexure resistance, with the remaining parts being inexpensive parts. Spec. 1, l. 25–2, l. 2; Spec. 3, ll. 1–14. Figure 2 of the ’540 Application is reproduced below: Figure 2 is a schematic view that indicates the constitution of the wire harness of the invention. Spec. 4, ll. 16–17. Wire harness (9) is wired Appeal 2019-004863 Application 14/812,540 3 through the vehicle floor and includes harness body (15) and shielding connectors (14) disposed as external connections portions at harness terminals (13). Spec. 7, ll. 4–6. Wire harness (9) further includes a plurality of fixing members (16) for wiring at predetermined positions. Spec. 7, l. 7. The electrical pathways (17) of harness body (15) includes first electrical pathway (20) and second electrical pathway (21). Spec. 8, ll. 2–3, 7–9. First electrical pathway (13) connects with inverter unit (4) in accordance with the position of harness terminal (13) at the front side, and has flexure resistance that is higher than that of second electrical pathway (21). Spec. 8, ll. 1l. 9– 14. Electrical pathway connecting part (22) connects first electrical pathway (20) and second electrical pathway (21), and is formed to become insulative from outside. Spec. 9, ll. 19–21. Figure 4 of the ’540 Application is reproduced below: Figure 4 is an exploded perspective view that shows an example (joint) of electrical pathway connecting part (22) of Figure 2. Spec. 4, ll. 21–22. First electrical pathway (20) is provided with conductive terminal Appeal 2019-004863 Application 14/812,540 4 metal fitting (28), which is tightened and connected to conductor (23) of first electrical pathway (20). Spec. 9, l. 24–10, l. 1. Terminal metal fitting (28) has an electrical contact part where a bolt insertion through hole (29) is formed. Spec. 10, ll. 1–3. Conductor (26) of second electrical pathway (21) is provided with the same terminal metal fitting (28). Spec. 10, ll. 3–4. When terminal metal fittings (28) of first electrical pathway (20) and second electrical pathway (21) are overlapped, and bolt (30) is inserted into bolt insertion through hole (29) and fastened and fixed with nut (31), electrical connection is completed. Spec. 10, ll. 5–8. Then, when an insulative member (covered with tape winding or a heat shrinkable tube, but not shown in these drawings) is provided outside the connection part, electrical pathway connecting part (22) is formed. Spec. 10, ll. 8–10. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, illustrates the claimed subject matter: 1. A wire harness comprising at least one of electrical pathways, wherein the electrical pathway includes: a first electrical pathway; a second electrical pathway; and an electrical pathway connecting part that connects the first electrical pathway and the second electrical pathway, wherein the first electrical pathway has a flexure resistance that is higher than that of the second electrical pathway; wherein the first electrical pathway comprises a first conductor and a first insulator that covers the first conductor, the second electrical pathway comprises a second conductor and a second insulator that covers the second conductor, and the first conductor has a different structure from the second conductor so that the first electrical pathway has the higher flexure resistance, Appeal 2019-004863 Application 14/812,540 5 wherein the first electrical pathway is disposed between a terminal of the wire harness at which a connector is provided to connect the wire harness with an external electrical connecting counterpart, and a fixing part of the wire harness at which the wire harness is fixed to a fixing target, a location of the fixing part of the wire harness being spaced apart from the terminal of the wire harness but being nearest to the terminal of the wire harness among a plurality of locations at which the wire harness is fixed to the fixing target, and wherein the first electrical pathway, the second electrical pathway and the second conductor each have ends at the fixing part. REFERENCES The Examiner relies on the following references in rejecting the claims: Name Reference Date Byfield, Jr. (“Byfield”) US 5,885,116 Mar. 23, 1999 Oiwa et al. (“Oiwa”) US 2009/0167461 A1 July 2, 2009 Itsuki et al. (“Itsuki”) US 2014/0120763 A1 May 1, 2014 Borowicz et al. (“Borowicz”) US 2014/0211379 A1 July 31, 2014 Oga3 JP 2010-2575707 A Dec. 9, 2010 REJECTIONS The Examiner maintains the following rejections under 35 U.S.C. § 1034 as obvious: (1) claims 1, 3–8, and 11–14 over Oga in view of Itsuki; (2) claim 9 over Oga in view of Itsuki and further in view of 3 For Oga, the Examiner relies on US 2013/0248246 A1, said to be an English translation of the Japanese application. Final Act. 3. 4 Because this application was filed after the March 16, 2013, effective date of the America Invents Act, we refer to the AIA version of the statute. Appeal 2019-004863 Application 14/812,540 6 Byfield; and (3) claim 10 over Oga in view of Itsuki, further in view of Oiwa and Borowicz. Final Act. 3–11. DISCUSSION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. 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 [E]xaminer’s rejections.”). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error in the Examiner’s rejections. Appellant bases all arguments for patentability on the combination of Oga and Itsuki. Appeal Br. 8–16; Reply Br. 4–10. We, therefore, limit our discussion to Appellant’s arguments on these references. Appellant does not argue any claims separately from others. We select claim 1 as representative; claims 3–14 stand or fall with claim 1. 37 C.F.R. § 42.37(c)(1)(iv). The Examiner finds that Oga teaches each of the limitations of claim 1 except that the reference does not disclose the first electrical pathway and the second electrical pathway each have ends at the fixing part. Final Act. 4. Oga’s Figure 5 is reproduced below: Appeal 2019-004863 Application 14/812,540 7 Figure 5 is a perspective view of a connecting part configured to connect a first power transmission path and a second power transmission path to each other. Oga ¶ 43. In Figure 5, connecting part (18) comprises conductor connecting structure (45), shield connecting structure (46), and cover portion (47). Oga ¶ 91. Connecting part (18) connects first power transmission path (15) and second power transmission paths (16, 17) to each other with the conductive ends insulated from outside. Oga ¶ 92. The Examiner finds that Itsuki discloses a first and second electrical pathway each have ends at a fixing part, referring to Itsuki Figure 1 which shows connector 10 has first and second electrical pathways which each have ends at mounting piece 52. Final Act. 5. The Examiner determines that it would have been obvious to have constructed Oga’s wiring harness with Itsuki’s fixing part in order to block vibration more reliably, as suggested by Itsuki. Id. (citing Itsuki ¶ 11). In the Advisory Action, the Examiner clarifies that the rejection modifies Oga’s connector 18 in view of Itsuki. Adv. Act. 2. The Examiner explains that Oga discloses a connector 18 and a clamp 38 that are discrete components located in different locations along wiring harness, but Itsuki Appeal 2019-004863 Application 14/812,540 8 discloses a structure that includes both a connector and clamp, and describes benefits of combining a connector with a clamp. Id. In the Answer, the Examiner further clarifies that the rejection relies on Itsuki’s connector (1) which teaches a connector that comprises a fixing part, i.e., mounting piece (52). Ans. 5. The Examiner finds that each of Oga’s clamp (38) and Itsuki’s mounting piece (52) are comparable and can be construed as examples of the claimed “fixing part,” configured to secure a respective component of a wiring harness onto a hybrid vehicle. Id. at 6. Appellant proffers four arguments. First, Appellant argues that Itsuki’s connector (10) is not comparable to Oga’s connecting part (18). Appeal Br. 8–11. Appellant argues that Itsuki connector (10) is mounted on a shield case of an inverter, motor, or the like of a vehicle, but Oga’s connector (18) is not. Id. at 9–10. Appellant contends that one of ordinary skill in the art at the time of the invention therefore would have considered modifying Oga’s connector 19—which is mounted on the inverter unit—but not connector 18. Id. at 10; see also Reply Br. 4. We are not persuaded by Appellant’s argument. The Examiner provided “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). That Oga discloses more than one connector, one of which (connector (19)) may be mounted on an inverter, motor, or the like, of a vehicle, does not identify error in the Examiner’s fact finding. The Examiner’s explanation of the reasons a person of ordinary skill in the art would have had to combine the prior art teachings is sufficient because an allowance is made for “the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Appeal 2019-004863 Application 14/812,540 9 Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). A skilled artisan would have recognized that Itsuki’s mounting piece (52) could be used to fix a connector to parts of a vehicle other than only an inverter or motor. See id. at 417 (“[I]f a technique has been used to improve one device and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.). Id. Such fixation of a portion of a wiring harness to a vehicle body would provide the expected result of reducing vibration of the wire harness. Thus, Appellant’s first argument is unpersuasive of reversible error. Second, Appellant argues that Itsuki’s mounting piece (52) is not comparable to Oga’s clamp (38). Appeal Br. 11–12; Reply Br. 5–6. This argument is unpersuasive of reversible error because, as the Examiner explains, the rejection does not rely on any comparison of Oga’s clamp (38) with Itsuki’s mounting piece (52). See Ans. 5–6. The Examiner’s mention that Oga clamp (38) is also a fixing part does not alter the reliance on mounting piece (52) as the fixing part of the claims. Third, Appellant argues that the Examiner misunderstands the teaching of Itsuki. Appeal Br. 13. Appellant contends that the Examiner confuses Itsuki’s mounting piece (52) with Itsuki’s “fixing member” which serves to block vibration (Itsuki ¶ 11), but that Itsuki only describes a “fixing member” in connection with fixing member (70) discussed in Itsuki ¶ 46. Id. However, Itsuki’s disclosure that a connector may further comprise a fixing member that blocks vibration is not limited to the specific element (70) discussed in Itsuki ¶ 46 and shown in some of the figures. “[I]n considering the disclosure of a reference, it is proper to take into account not Appeal 2019-004863 Application 14/812,540 10 only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). One of ordinary skill in the art would reasonably conclude that a vibration-reducing fixing member in a connector could be affixed to a portion of a vehicle. Such would be use of a known technique to improve similar devices in the same way, making use of the technique obvious. See KSR, 550 U.S. at 417. Fourth, Appellant argues that the proposed combination of Oga and Itsuki would render Oga’s cover member (47) (see Figure 5 above) inoperable for its intended purpose. Appeal Br. 14–16. Appellant contends that modifying “Oga’s connecting part 18 to also include Oga’s fixing part 38 directly joined thereto, as in Itsuki, would require that Oga’s fixing part 38 extend through weather resistant cover portion 47.” Id. at 15. This argument is unpersuasive of reversible error, as it relies on a premise to bodily incorporate Itsuki’s mounting piece (52) into Oga’s connector. However, it is well established that the obviousness inquiry does not ask “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). The argument is also unpersuasive in that it is based on modifying Oga’s clamp (38), which is not relied on in the rejection. Compare Appeal Br. 15–16 with Ans. 8–9. Appeal 2019-004863 Application 14/812,540 11 We sustain the rejection of claim 1 over Oga in view of Itsuki. For the same reasons, we sustain the rejections of claims 3–14. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–8, 11– 14 103 Oga, Itsuki 1, 3–8, 11– 14 9 103 Oga, Itsuki, Byfield, Jr. 9 10 103 Oga, Itsuki, Oiwa, Borwicz 10 Overall Outcome 1, 3–14 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). AFFIRMED