YAZAKI CORPORATION

Patent Trials and Appeals Board

Aug 26, 2020

15321878 - (D) (P.T.A.B. Aug. 26, 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.
15/321,878 12/23/2016 Kazuki MANO Q230623 1974
65565 7590 08/26/2020
SUGHRUE-265550
2000 PENNSYLVANIA AVE. NW
SUITE 900
WASHINGTON, DC 20006
EXAMINER
GUSHI, ROSS N
ART UNIT PAPER NUMBER
2833
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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 KAZUKI MANO
Appeal 2019-006036
Application 15/321,878
Technology Center 2800
Before N. WHITNEY WILSON, DEBRA L. DENNETT, and
LILAN REN, 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 1–4. See Final Act. 1. 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.” Appeal Br. 2.
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Application 15/321,878

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CLAIMED SUBJECT MATTER
The claims relate to an electric wire and a terminal “capable of
preventing corrosion in a conductor of the electric wire while keeping, as
high as possible, the degree of freedom in designing the shape of the
terminal and the compatibility of the terminal with a target to which the
terminal should be attached.” Spec. ¶ 6. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An electric wire with terminal comprising an electric wire
and a terminal electrically connected to the electric wire, the
electric wire with terminal including at least one selected from a
group consisting of:
a first anti-corrosion structure configured to provide an
anti-corrosion layer having a thickness from 1 μm to 200 μm so
as to internally contain a connection part of a conductor of the
electric wire and the terminal; and
a second anti-corrosion structure configured to connect the
conductor of the electric wire and the terminal through a
conductive anti-corrosion layer having a thickness from 1 μm to
200 μm;
the anti-corrosion layer and the conductive anti-corrosion
layer including at least one material selected from the group
consisting of titanium nitride, titanium carbonitride, chromium
nitride, aluminum oxide, silicon oxide, titanium oxide, yttrium
oxide, titanium carbide, and silicon carbide.
Claims Appendix (Appeal Br. 25).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Onuma
Otsuka
Nishikawa
US 2007/0184715 A1
US 2014/0224535 A1
US 2016/0064836 A1
Aug. 9, 2007
Aug. 14, 2014
Mar. 3, 2016

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REJECTIONS
Claim 1–3 are rejected under 35 U.S.C. § 103 as unpatentable over
Onuma and Nishikawa. Final Act. 2.
Claims 1 and 4 are rejected under 35 U.S.C. § 103 as unpatentable
over Otsuka. Final Act. 3.
OPINION
Claim 1 (Onuma & Nishikawa)2
In rejecting claim 1 over Onuma and Nishikawa, the Examiner finds
that Onuma teaches or suggests all limitations of the recited electric wire
except that the “anti-corrosion structure (nickel paste) is not among” those
recited. Final Act. 2. The Examiner accordingly finds that Nishikawa teaches
a silicon carbide anti-corrosion structure having a thickness of 100 µm or
less meeting the remaining claim limitations. Id.
Appellant does not dispute the prior art teachings but argues that “a
film having a thickness of 100 µm or less (as disclosed in Nishikawa) could
not be satisfactorily used in the invention of Onuma.” Appeal Br. 15.
According to Appellant, “such a thin layer would not be able to sufficiently
seal the connection 18 of Onuma in order to provide waterproofing and
sufficient conductivity.” Id. Appellant also contends “the thin layer of

2 Appellant does not separately argue for the rejection of claims 2 and 3 over
Onuma and Nishikawa. See Appeal Br. 20 (stating that “Appellant
respectfully requests reversal of the rejection of claims 1–4 based on the
combination of Onuma in view of Nishikawa” which is believed to be a
typographical error of the claims rejected based on these references). These
claims stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
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Nishikawa would not be suitable for use with the method of connecting the
terminal and electric wire taught by Onuma.” Id. at 15–16.
We are not persuaded by these arguments as they are not
commensurate in scope with apparatus claim 1 which requires neither a
particular level of conductivity nor characteristics such as being waterproof.
See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (holding that “appellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims”). The patentability of apparatus claim 1 is assessed
based on the recited structure which has not been distinguished from the
prior art. Moreover, all of the features of Nishikawa need not be bodily
incorporated into Onuma and the skilled artisan is not compelled to blindly
follow the teaching of one prior art reference over the other without the
exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984).
With regard to the limitation of an “anti-corrosion layer having a
thickness from 1 μm to 200 μm,” Appellant acknowledges that Nishikawa
discloses an anti-corrosion structure having a thickness of 100 μm or less.
Appeal Br. 15. “[T]he existence of overlapping or encompassing ranges
shifts the burden to the applicant to show that his invention would not have
been obvious.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
[W]here there is a range disclosed in the prior art, and the
claimed invention falls within that range, there is a presumption
of obviousness. But the presumption will be rebutted if it can be
shown: (1) That the prior art taught away from the claimed
invention, In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997);
or (2) that there are new and unexpected results relative to the
prior art, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
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Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004).
In this case, Appellant does not argue that there are new and
unexpected results. As to Appellant’s argument that the prior art teaches
away, we find it unpersuasive because Appellant does not argue that
Nishikawa teaches away from the claimed invention but rather that
“Nishikawa teaches away from the Examiner’s modification of Onuma.”
Appeal Br. 18 (emphasis omitted); see In re Gurley, 27 F.3d 551, 553 (Fed
Cir. 1994) (“[I]n general, a reference will teach away if it suggests that the
line of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.”).
Moreover, the Examiner’s rationale in combining Onuma and
Nishikawa is that “[i]t would have been obvious to replace the anti-corrosion
paste taught in Onuma in the Onuma wire and terminal with the conductive
auxiliary coating agent and structure taught in Nishikawa” because “[t]he
substituted components (one anticorrosive coating for another) and their
functions were known in the art.” Final Act. 3. Appellant’s argument,
directed to “Nishikawa clearly discourages a connection method that does
not include an oxide removal and smoothening step” (Appeal Br. 18), does
not address the Examiner’s rationale. In any event, the method used in
Nishikawa to manufacture the prior art device does not patentably
distinguish the apparatus claim at issue here.
Appellant’s argument that there is no reasonable expectation of
success is likewise unpersuasive because it is not commensurate in scope
with the claim. Appellant argues that “there would not have been a
reasonable expectation of maintaining the low contact resistance with
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aluminum—as required by Onuma—when modifying Onuma in the manner
asserted by the Examiner” (Appeal Br. 17) without sufficiently explaining
why the purported low contact resistance applies to the apparatus of claim 1
which does not recite any particular property of the apparatus. In any event,
Onuma paragraph 61 which is cited by Appellant does not support
Appellant’s argument that Onuma requires a low contact resistance. Appeal
Br. 17, 18; Reply Br. 6. Onuma paragraph 61 merely compares various
materials and states that “[t]he nickel paste 32 is characterized in that the
contact resistance to the aluminum alloy is low.” Not only does Appellant’s
assertion that “maintaining the low contact resistance with aluminum as
required by Onuma” (Appeal Br. 18) lacks evidentiary support, it is also
contradicted by Appellant’s own statement that “Onuma is not concerned
about contact resistance” (Appeal Br. 20).
Moreover, Appellant does not address the Examiner’s finding that
“Onuma discloses an aluminum terminal swaged onto an aluminum wire
(Onuma paragraph 0040), with a nickel paste 32 in the swaged joint”
whereas “Nishikawa discloses an aluminum to aluminum connection using
high conductivity aluminum.” Compare Ans. 5 (emphases omitted), with
Reply Br. 6. The “ThreeBond” article proffered by Appellant shows a Table
of various “bonding resistance . . . between various conductive adhesives
and various substrates” but does not include silicon carbide which forms the
basis of the Examiner’s rejection. See ThreeBond 3 (cited in Appeal Br. 17);
see also Appeal Br. 17 (acknowledging that the Examiner’s rejection is
“replacing the nickel paste with one containing silicon carbide”). No
reversible error has been identified in the Examiner’s rationale in combining
the references.
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Lastly, Appellant argues that “Nishikawa’s problems are not related to
technical problems addressed by (or perhaps suffered by) the connection
method of Onuma or the technical problems addressed by the present
application.” Appeal Br. 20. We are not persuaded that reversible error has
been identified. “In determining whether the subject matter of a patent claim
is obvious, neither the particular motivation nor the avowed purpose of the
patentee controls.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20
(2007). Rather, “any need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” Id.
Claim 1 (Otsuka)3
Appellant argues that the Examiner reversibly erred in rejecting claim
1 over Otsuka because the alumite layer 35 in Otsuka “does not internally
contain the connection part of the terminal.” Appeal Br. 23. This argument is
not persuasive because it is not based on the claim language which requires
“an anti-corrosion layer . . . to internally contain a connection part of a
conductor of the electric wire and the terminal.”
As the Specification provides: “a ceramic layer . . . is provided to
internally contain (cover) a connection part (electric connection part) EJ
where the conductor 10 and the terminal T are in direct contact.” Spec. ¶ 22
(explaining “[t]hus, a first anti-corrosion structure is formed”); see Appeal
Br. 5 (citing Spec. ¶ 22 as written description support). Appellant’s
argument that the connection part EJ includes both the wire and the terminal

3 Appellant does not separately argue for the rejection of claim 4 over
Otsuka. See Appeal Br. 23. Claim 4 stands or falls with claim 1 based on
Otsuka. See id.; see also 37 C.F.R. § 41.37(c)(1)(vii).
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is not supported by the Specification. See Reply Br. 9. Appellant’s reference
to Figure 2 of the Specification does not show otherwise because Appellant
does not explain why the illustration is inconsistent with the text of
paragraph 22 of the Specification.
Appellant additionally argues that whereas “the first anti-corrosion
structure is recited as internally containing the connection part,” “the second
anti-corrosion structure is recited differently as being configured to connect
the wire and the terminal” which distinguishes the conductivity of the first
anti-corrosion structure which is unspecified. Reply Br. 9–10. We are not
persuaded. As explained in the preceding paragraph, the Specification
paragraph 22 provides that “a ceramic layer . . . is provided to internally
contain (cover) a connection part (electric connection part) EJ where the
conductor 10 and the terminal T are in direct contact” and “[t]hus, a first
anti-corrosion structure is formed.” Paragraph 23 of the Specification, on the
other hand, states that when forming the second anti-corrosion structure, “a
conductive ceramic layer is formed in an inside surface of the terminal T.”
The Specification, therefore, provides that whereas the first ceramic layer is
formed over “where the conductor 10 and the terminal T are in direct
contact” (Spec. ¶ 22), the second ceramic layer “is formed in an inside
surface of the terminal T” (Spec. ¶ 23). Appellant’s argument with regard to
the Examiner’s finding of “an anti-corrosion structure . . . to internally
contain a connection part of a conductor of the electric wire and the
terminal” does not refer to the text of the Specification and does not show
support from the Specification. See Reply Br. 8–10 (emphasis omitted).
Lastly, Appellant’s argument that alumite layer 35 in Otsuka does not
teach or suggest “a conductive anti-corrosion structure” (Appeal Br. 23) is
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not persuasive of reversible error in the rejection because it does not address
the specifics of the Examiner’s rejection. See Final Act. 3–4 (finding that
Otsuka teaches or suggests the recited “first anti-corrosion structure”).

CONCLUSION
The Examiner’s rejections are affirmed.

DECISION SUMMARY
More specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3 103 Onuma and Nishikawa 1–3
1, 4 103 Otsuka 1, 4
Overall
Outcome
1–4

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