YAZAKI CORPORATIONDownload PDFPatent Trials and Appeals BoardAug 26, 202015321878 - (D) (P.T.A.B. Aug. 26, 2020) Copy Citation 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. Appeal 2019-006036 Application 15/321,878 2 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 Appeal 2019-006036 Application 15/321,878 3 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). Appeal 2019-006036 Application 15/321,878 4 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). Appeal 2019-006036 Application 15/321,878 5 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 Appeal 2019-006036 Application 15/321,878 6 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. Appeal 2019-006036 Application 15/321,878 7 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). Appeal 2019-006036 Application 15/321,878 8 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 Appeal 2019-006036 Application 15/321,878 9 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 Copy with citationCopy as parenthetical citation