Ex Parte Matsumoto et alDownload PDFPatent Trial and Appeal BoardNov 30, 201814992661 (P.T.A.B. Nov. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/992,661 01/11/2016 39083 7590 KENEALY VAIDYA LLP 3000 K Street, N.W. Suite 200 Washington, DC 20007 12/04/2018 FIRST NAMED INVENTOR Yusuke Matsumoto 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 6006-0204 7321 EXAMINER 0 DONNELL, LUCAS J ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 12/04/2018 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 YUSUKE MATSUMOTO, TAKAHIRO SHIOHAMA, and MASAOIWATA Appeal2018-002555 Application 14/992,661 Technology Center 1700 Before N. WHITNEY WILSON, BRIAND. RANGE, and LILAN REN, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's February 10, 2017 decision finally rejecting claims 1-16, which constitute all the claims pending in this application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We reverse. 1 The Appellant is the Applicant, Y azaki Corporation, which is also identified as the real party in interest (Appeal Br. 3). Appeal2018-002555 Application 14/992,661 CLAIMED SUBJECT MATTER Appellant's disclosure is directed to a terminal securing auxiliary member for securing a battery terminal to a battery (Spec. ,r 1 ). The terminal securing auxiliary member includes a terminal securing portion 41, a battery joining portion 42, and a connecting portion 43, as shown in FIG. 1: FIG. 1. FIG. 1 shows a perspective view of a battery terminal which is attached to a battery by assembling thereto an embodiment of a terminal-securing auxiliary member according to the disclosure. Terminal securing portion 41 is configured to be fastened to battery post 12 and battery terminal 20 (Spec. ,r 15). Battery joining portion 42 is configured to engage a mating structure located on a portion of the battery to restrict movement in a direction along the upper surface of the battery and also configured to position the battery terminal in a predetermined orientation (id.). Connecting portion 43 connects terminal securing portion 41 and battery joining portion 42 (id.). The claimed invention is set forth in 2 Appeal2018-002555 Application 14/992,661 claim 1, which is reproduced below from the Claims Appendix of the Appeal Brief: 1. A terminal-securing auxiliary member for fixing a battery terminal relative to a battery in a predetermined orientation, the battery having a battery post disposed at a post disposing portion of the battery, the battery terminal configured to be secured to the battery post and configured to be to fastened to a battery- direct-attached type fuse unit, the battery further having a portion of irregular height on an upper surf ace thereof in a circumferential edge of the post disposing portion, the terminal- securing auxiliary member comprising: a terminal securing portion which is configured to be fastened to the battery post and which is configured to be secured to the battery terminal; a battery joining portion which is configured to engage a mating structure located on the portion of the irregular height to restrict movement in a direction along the upper surface of the battery, and the battery joining portion is configured to position the battery terminal in the predetermined orientation when the battery joining portion engages the mating structure located on the portion of the irregular height; and a connecting portion which connects the terminal securing portion and the battery joining portion. REJECTIONS I. Claim 1 is rejected under 35 U.S.C. § 102(a)(l) as anticipated by Tanaka. 2 II. Claims 1-16 are rejected under 35 U.S.C. § 103 as unpatentable over Tanaka in view ofWakata. 3 2 Tanaka, US 5,804,770, issued September 8, 1998. 3 Wakata et al., US 2001/ 0024909 Al, published September 27, 2001. 3 Appeal2018-002555 Application 14/992,661 DISCUSSION Rejection I. "A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation." In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). Appellant argues that Tanaka does not disclose that "the battery joining portion is configured to position the battery terminal in the predetermined orientation when the battery joining portion engages the mating structure located on the portion of the irregular height" (Appeal Br. 9). The Examiner finds that this element of the claim is shown by Tanaka's raised portion 52 coupling with the hold of bottom portion 27, as shown in FIG. 2: 54 FIG.2 FIG. 2 is a perspective view showing a battery connection terminal assembling operation according to Tanaka's disclosure 4 Appeal2018-002555 Application 14/992,661 Appellant argues that Tanaka's cover 5 is not in a predetermined orientation when it is fitted to one battery 504 (Appeal Br. 9). Appellant contends that the circular insertion hole 4 and cylindrical battery post 51 permit cover 5 to rotate 360° around battery post 51 (id.). Therefore, according to Appellant, Tanaka's device does not have a battery joining portion configured to position the battery terminal in a predetermined orientation (Appeal Br. 10). Appellant also argues that Tanaka's cover 5 does not actually engage any portion of either battery 50 (id.). In response, the Examiner finds that, as shown in FIG. 1, when wire 2 ( corresponding to the claimed battery joining section) engages the mating structure on battery, its orientation relative to the battery is fixed because of engaging projection 34, holding projections 33, and contact portion 31: 4 Cover 5 is used to connect two separate batteries 50 (Tanaka, 7:9-12). 5 Appeal2018-002555 Application 14/992,661 F JG. I FIG. 1 is an exploded perspective view of a first embodiment of Tanaka's invention. The dispositive flaw in the Examiner's finding of anticipation stems from the recitation in claim 1 : "the battery joining portion is configured to position the battery terminal in the predetermined orientation when the battery joining portion engages the mating structure located on the portion of the irregular height" ( emphasis added). The Examiner finds that washer 52 corresponds to the claimed "portion of irregular height" (see, e.g., Ans. 7). 5 The Examiner finds that engaging projection 34, holding projections 33, 5 The Examiner also finds that jaw portions 20 and 25 (FIG. 1 ), as well as holding projections 128 (FIG. 5) can correspond the claimed portion of 6 Appeal2018-002555 Application 14/992,661 and contact portion 31 are what fixes the orientation of the battery joining portion (wire 2) (Ans. 8) and therefore correspond to the claimed "mating structures." However, as noted by Appellant, engaging projection 34, holding projections 33, and contact portion 31 are not "located on the portion of irregular height" ( which the Examiner finds corresponds to washer 52). Because the claim recites that the mating structure is located on the portion of the irregular height, and the evidence of record does not show that Tanaka discloses this feature, we reverse the anticipation rejection of claim 1. Rejection II. The Examiner finds that Wakata discloses a battery having a battery post and a raised portion around the battery post on the top surface of the battery and rotation prevention projections that couple with a series of holes and projections on a terminal cover and electrical connector to hold the cover and connector in a predetermined position (Final Act. 13, citing Wakata Abstract, Figs. 1-5, 7, and ,r 23). The Examiner finds that it would have been obvious to modify Tanaka to incorporate the rotation preventing projections and corresponding holes of Wakata (id.). However, as noted by Appellant (Appeal Br. 11-13), the rotation preventing projections of Waka ta are not located on a portion of irregular height of the battery. In particular, Wakata specifically states that "a washer 3 and [the] rotation-preventing member 4 are fastened between the nut 2 and the upper surface of the battery" (Wakata, ,r 23). Thus, Wakata irregular height (see, e.g., Ans. 12). However, as noted by Appellant, these features are part of Tanaka's cover, and not the battery, and therefore cannot satisfy the requirements of claim 1. 7 Appeal2018-002555 Application 14/992,661 explicitly states that its rotation prevention member is not part of the battery and, therefore, cannot be "located on the portion of the irregular height" of the battery. To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007). In the absence of a proper prima facie case of obviousness, an applicant who complies with the other statutory requirements is entitled to a patent. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In this instance, the preponderance of evidence of record does not support a determination that the cited art, alone or in combination, renders obvious the claimed feature that the battery joining portion is configured to engage a mating structure located on the portion of the irregular height. Accordingly, we cannot sustain the obviousness rejection. CONCLUSION We REVERSE the rejection of claim 1 under 35 U.S.C. § 102(a)(l) as anticipated by Tanaka. We REVERSE the rejection of claims 1-16 under 35 U.S.C. § 103 as unpatentable over Tanaka in view ofWakata. REVERSED 8 Copy with citationCopy as parenthetical citation