Yazaki Corporation

Patent Trials and Appeals Board

Dec 28, 2020

2019005424 (P.T.A.B. Dec. 28, 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.
15/346,974 11/09/2016 Nobuyuki Takahashi 1451562.620US3 9315
21874 7590 12/28/2020
LOCKE LORD LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
MA, CALVIN
ART UNIT PAPER NUMBER
2693
NOTIFICATION DATE DELIVERY MODE
12/28/2020 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NOBUYUKI TAKAHASHI
___________

Appeal 2019-005424
Application 15/346,974
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–8. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is
Yazaki Corp. Appeal Br. 2.

Appeal 2019-005424
Application 15/346,974

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STATEMENT OF THE CASE 2
Disclosed embodiments of Appellant’s invention relate to a “vehicular
display device that is provided on an instrument panel, projects a display
image onto a windshield, and allows a passenger to visually recognize a
virtual image of the display image reflected on the windshield.” Spec. ¶ 1.
Illustrative Claim 1
1. A vehicular display device that is provided on an
instrument panel, projects a display image toward a windshield,
and allows a passenger to visually recognize a virtual image of
the display image reflected on the windshield, the vehicular
display device comprising:
a device body provided inside the instrument panel;
a display unit provided inside the device body to project
the display image;
a transparent cover that allows the display image
projected from the display unit to pass therethrough to the
windshield;
a frame portion provided with an opening allowing
passage of the display image that has passed through the
transparent cover; and
a cushioning material provided between a part of a
circumferential edge of the opening on the frame portion and
the transparent cover.

Appendix A, Appeal Br. 21 (emphasis added regarding disputed limitations).

2 We herein refer to the Final Office Action, mailed July 23, 2018 (“Final
Act.”); Appeal Brief, filed Jan. 23, 2019 (“Appeal Br.”); the Answer, mailed
May 9, 2019 (“Ans.”), Reply Brief, filed July 9, 2019 (“Reply Br.”).
Appeal 2019-005424
Application 15/346,974

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Prior Art Evidence
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Cathey, Jr. et al. (“Cathey”) US 2006/0172767 A1 Aug. 3, 2006
Fujikawa et al. (“Fujikawa”) US 2015/0042542 A1 Feb. 12, 2015

Rejection on Appeal
The Examiner rejects claims 1–8 under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Fujikawa and
Cathey. See Final Act. 2–4.

ANALYSIS
In reaching this Decision, we have considered all evidence presented
and all arguments actually made by Appellant. We have reviewed
Appellant’s arguments in the Appeal Brief and the Reply Brief, the
Examiner’s rejections in the Final Action, and the Examiner’s responses in
the Answer to Appellant’s arguments.
On this record, for the reasons discussed below, we find Appellant
provides sufficient argument and evidence to persuade us of error regarding
the Examiner’s claim construction, underlying factual findings, and ultimate
legal conclusion of obviousness regarding all rejected claims 1–8 on appeal.

Appeal 2019-005424
Application 15/346,974

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Rejection under 35 U.S.C. § 103 of Claims 1–8
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding the
cited combination of Fujikawa and Cathey would have taught or suggested
the disputed limitation of “a cushioning material provided between a part of
a circumferential edge of the opening on the frame portion and the
transparent cover [,]” within the meaning of independent claim 1?3
Analysis
The Examiner finds Fujikawa is silent regarding any teaching of a
“cushioning material” that is “provided between a part of a circumferential
edge of the opening on the frame portion and the transparent cover,” as
recited in claim 1. See Final Act. 4. To provide the teaching found missing
from Fujikawa, the Examiner turns to Cathey, and finds Cathey’s gel 140
teaches or suggests the claimed “cushioning material” recited in claim 1. See
Final Act. 4 (citing Cathey, Fig. 3F, ¶¶ 59–61).
Appellant disagrees with the Examiner’s finding, and contends:
The references are misapplied in so far as a gel used for
dampening a coefficient of thermal expansion mismatch is
considered, in the rejection, to be an equivalent element for a
mechanical cushioning material between potentially vibrating
parts. The gel in the cited art is encapsulated and not under
mechanical stress. Furthermore the viscosity of the
encapsulated gel is not disclosed which would be highly
relevant to whether or not it could be self-supporting and used
without being encapsulated. Thus the application of one
reference, even as a teaching reference, is not a proper
application because the alleged teaching of the gel is not

3 Throughout this opinion, we give the contested claim limitations the
broadest reasonable interpretation (“BRI”) consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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technically feasible for the claimed application and therefore
the rejection fails to establish a prima facie showing. The
rejection does not establish that a gel used for “cushioning” a
coefficient of thermal expansion mismatch could be used for
“cushioning” in mechanical applications at all, thus the nexus
of assuming that the gel for thermal use is equivalent to a
cushioning structure does not exist.
Appeal Br. 6
As an initial issue of claim construction regarding the disputed
claim 1 language (“a cushioning material provided between a part of a
circumferential edge of the opening on the frame portion and the transparent
cover” (emphasis added)), our reviewing court provides applicable guidance:
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is not
simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is “consistent with the
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) (citation and internal quotation marks omitted); see also
In re Suitco Surface, 603 F.3d 1255, 1259-60 (Fed. Cir. 2010).
In re Smith Int'l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017).
Following the guidance of Smith, we turn to Appellant’s Specification
for context regarding the broadest reasonable interpretation of the disputed
claim 1 term “a cushioning material.” (emphasis added).
The Specification, in pertinent part, describes:
A cushioning material 7 is provided along the entire
circumference of the end edge 51A of the opening portion 51
between the end edge 51A of the opening portion 51 and the
surface of the transparent cover 4. The cushioning material 7 is
formed from an elastic material made of a foamable resin such
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Application 15/346,974

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as a sponge, and is adhered onto either of or both of the end
edge 51A of the opening portion 51 and the surface of the
transparent cover 4.
Spec. ¶ 22 (emphasis added).
In addition, since the opening portion 51 is formed on the bezel
body 5 which is a separate member from the instrument panel I,
and the cushioning material 7 is provided between the end edge
5 1A of the opening portion 51 and the transparent cover 4, the
precision in positioning the end edge 51A of the opening
portion 51 and the transparent cover 4 can be enhanced,
whereby generation of abnormal noise can further be reduced.
Spec. ¶ 35 (emphasis added).
Given that the Specification (id.) describes the claimed “cushioning
material” as being elastic like a sponge and being capable of suppressing
abnormal noise, we conclude the Examiner’s reading of the “cushioning
material” recited in claim 1 on Cathey’s heat-conducting gel 140 is an overly
broad and unreasonable interpretation. See Cathey ¶¶ 60–61; Fig. 3F.
In particular, we note that Cathey emphasizes the thermal
conducting property of gel 140: “The gel 140 conducts heat emitted by the
LED chip 138 to the mounting block 144 and to the substrate 136, where it
is dissipated.” Cathey ¶ 61 (emphasis added). See also Cathey, Fig. 3F,
gel 140.
Given this evidence (id.), we conclude the Examiner’s erred in
reading the “cushioning material” recited in claim 1 on Cathey’s thermal gel
140 (Fig. 3F). Given the supporting context found in the Specification (¶¶
22, 35), and in consideration of the precedential guidance of Smith (871 F.3d
at 1382-83), on this record, we are persuaded by Appellant’s arguments. We
agree with Appellant that the Examiner has not shown by a preponderance
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of the evidence a teaching or suggestion of “a cushioning material” within a
broad but reasonable interpretation of independent claim 1. (emphasis
added).
For essentially the same reasons argued by Appellant in the Briefs, we
conclude the Examiner’s interpretation of the claimed “cushioning material”
is overly broad, unreasonable, and inconsistent with Appellant’s
Specification. Claim 1. Therefore, the Examiner has not shown how the
teachings of Fujikawa and Cathey individually or collectively teach or
suggest the disputed limitation of “a cushioning material provided between
a part of a circumferential edge of the opening on the frame portion and the
transparent cover,” as recited in claim 1. (emphasis added).
Accordingly, we are constrained on this record to reverse the
Examiner’s § 103 rejection of independent claim 1. For the same reasons,
we also reverse the Examiner’s rejection of independent claim 8, which
recites the disputed “cushioning material” limitation using similar language
having commensurate scope.
Because we have reversed the Examiner’s obviousness rejection of
independent claims 1 and 8, for the same reasons, we also reverse the
obviousness rejection of dependent claims 2–7, which depend directly or
indirectly from claim 1.
CONCLUSION
The Examiner erred in rejecting claims 1–8 under 35 U.S.C. § 103,
over the cited combination of Fujikawa and Cathey.

Appeal 2019-005424
Application 15/346,974

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8 103 Fujikawa, Cathey 1–8
REVERSED