Ex Parte Adachi et al

Patent Trial and Appeal Board

Mar 23, 2018

14247780 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/247,780 04/08/2014
65565 7590 03/27/2018
SUGHRUE-265550
2100 PENNSYLVANIA AVE. NW
WASHINGTON, DC 20037-3213
FIRST NAMED INVENTOR
Hideomi ADACHI
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.
Q211210 1132
EXAMINER
EGOA VIL, GUILLERMO J
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
SUGHRUE265550@SUGHRUE.COM
PPROCESSING@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 HIDEOMI ADACHI and YOSHIAKI OZAKI
Appeal2017-007486
Application 14/247,780
Technology Center 2800
Before JEFFREY T. SMITH, JEFFREY W. ABRAHAM,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1 and 2 of Application
14/247,780 under 35 U.S.C. § 103(a). Final Act. (April 18, 2016) 2-9.
Appellant 1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 The Appellant, Y azaki Corporation, is identified as the real party in
interest. Appeal Br. 2.
Appeal2017-007486
Application 14/247,780
BACKGROUND
The present application generally relates to a high voltage wire
harness used to electrically connect devices of a hybrid vehicle or an electric
vehicle such as a motor unit, an inverter unit or a battery. Spec. 1. The wire
harness includes one or more wires and a protective member. The protective
member has a pipe-like shape but is formed of a conductive resin
composition. The resin is lighter than a metallic pipe structure but, due to its
conductive nature, possesses an electromagnetic shielding effect. Id. at 3.
Claim 1 is representative of the claims at issue and is reproduced
below (with certain language bolded for emphasis):
1. A wire harness, comprising:
one or more conducting paths;
a protective member that is formed in a pipe shape, and
accommodates the one or more conducting paths in the
protective member to shield a electromagnetic wave emitted
from the one or more conducting paths, wherein the protective
member is formed of resin composition that has conductivity;
an insulating resin coating that is formed of resin
composition having a property of insulating, wherein an
outside surface of the protective member is covered with the
insulating resin coating at least, except for an end part of
the protective member for a predetermined range from an
edge of the protective member; and
a braid that is connected and fixed to the end part of the
protective member,
wherein
the outside surface of the end part of the protective
member is exposed for the predetermined range, and the
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Application 14/247,780
exposed part is formed as a shielding member connecting part
to be connected to a terminal shielding member.
Appeal Br. 15 (Claims App.) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections: 2
1. Claim 1 is rejected under 35 U.S.C. § 103(a) as obvious over
Aisenbrey3 in view ofKihira. 4 Final Act. 3-5.
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as obvious over
Aisenbrey in view ofKihira and further in view ofDunand. 5 Id. at
5---6.
DISCUSSION
Rejection 1. The Examiner rejected claim 1 as obvious over
Aisenbrey in view ofKihira. Id. at 3-5. Claim 1 requires a wire harness
having a conductive protective member where "an outside surface of the
protective member is covered with the insulating resin coating at least,
except for an end part of the protective member for a predetermined range
from an edge of the protective member." This is exemplified by Figure 4 of
the application, reproduced in part below:
2 The Final Rejection includes an additional rejection of claims 1 and 2 that
was later withdrawn by the Examiner. Final Act. 6-9; Answer 6.
3 Aisenbrey, US 2005/0006126 Al, published Jan. 13, 2005.
4 Kihira, US 2004/0099427 Al, published May 27, 2004.
5 Dunand, US 2004/0256136 Al, published Dec. 23, 2004.
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Appeal2017-007486
Application 14/247,780
Figure 4 is a cross-sectional view which shows the outer portion of a wire
harness. Spec. 6, 14. The insulating resin coating 32 is formed on the outer
surface 34 of the protective member 20. Id. at 14. The insulating resin
coating 32 is absent from the outer surface of the protective member at the
end part 33 of the protective member. Id. at 14--15. There, the outside
surface of the protective member is exposed. Id.
The Examiner found that Figure 1 c of Aisenbrey teaches a wiring
harness having a protective member where the outside surface of the
protective member is covered with insulating resin except for an end part a
predetermined distance from the edge of the protective member. Final Act.
3. Figure 1 c of Aisenbrey is reproduced, in part, below:
}
f
\. .. ..._____, 4
"'
FIG. le
4
Appeal2017-007486
Application 14/247,780
Figure le depicts a shielded cable. Aisenbrey i-f 39. The Examiner found
that "insulating resin coating 7 covers the protective member 6 except the
end part for a predetermined length from the edge." Final Act. 3. The
Examiner further relies on Aisenbrey' s teaching of an embodiment where
"shielding 6 is connected to a de reference or a ground signal." Answer 3
(citing Aisenbrey i-f 39). The Examiner additionally cites to Aisenbrey's
teaching that a "connector, not shown, may be used to connect the shield 6 of
the third embodiment [Fig. le] shielded cable device to a ground reference."
Id. at 3 (citing Aisenbrey i-f 41). The Examiner determined that the
foregoing teachings indicate that the end part of the protective member is
exposed. Id.
Appellant contends that Figure 1 c "is not a true depiction of the
finished product in Aisenbrey" but rather a "perspective view of the end of
the wire to explain the internal details of the wire(s)." Appeal Br. 8.
Appellant further contends that Aisenbrey' s teaching of a harness with the
shielding layer connected to a de reference or a ground signal is silent as to
whether the shielding is exposed near its edge. Reply Br. 5. Appellant
asserts that Aisenbrey includes two examples in which the shielding 6 may
be connected to a ground reference, neither of which require exposure of the
shielding 6 from the insulating coating. Id. at 6. Appellant concludes that
"the Examiner can cite to no provision in Aisenbrey for the teaching that the
shielding 6 must be exposed in order to connect to a DC reference." Id. at 6.
A claim will be rejected where "the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art." 35 U.S.C. § 103(a) (pre-AIA). The
obviousness analysis "need not seek out precise teachings directed to the
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Appeal2017-007486
Application 14/247,780
specific subject matter of the challenged claim, for a court [or this Board]
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).
Here, Aisenbrey teaches as follows:
A connector, not shown, may be used to connect the
shield 6 of the third embodiment shielded cable device to a
ground reference. Alternatively, a solderable layer, not shown,
may optionally be formed overlying the surface of the
conductive loaded resin-based shield 6. For example, a
metal layer may be formed by plating or by coating.
Aisenbrey i-f 41 (emphasis added). This passage teaches a connection to the
exterior of the conductive shield layer. The Examiner has determined that a
person of ordinary skill in the art would have known known that a
connection could have been placed at the "end part of the protective
member." Answer 3-5. Appellant has argued that the examples of
Aisenbrey do not "require" the claimed arrangement. Reply Br. 5---6. For
example, in the Reply Brief, Appellant proposes that "[ r ]egarding the
solderable layer, one of ordinary skill may simply extend the solderable
layer beyond the edge of the shielding layer 6 so as to electrically connect
the solderable layer to a ground reference." Id. at 6.
Appellant's example may (or may not) be one of several
configurations that one of ordinary skill in the art would have viewed as
feasible. Such speculation, however, does not rebut the Examiner's
determination of obviousness. See KSR, 550 U.S. at 418.
Nor is the Examiner's determination rebutted by Aisenbrey's
teachings regarding co-extrusion. As noted by the Examiner, other means of
production are known in the art and not excluded from Aisenbrey. Answer
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Application 14/247,780
4. Further, Appellant has not rebutted the Examiner's finding that, even
were the prior art product produced by co-extrusion, the insulating layer may
be removed from the shielding layer.
In view of the foregoing, Appellant has failed to show error in the
Examiner's determination of obviousness of claim 1.
Rejection 2. The Examiner rejected claim 2 as obvious over
Aisenbrey in view ofKihira and further in view of Dunand. Final Act. 5---6.
In seeking reversal of this rejection, Appellant relies upon the same
arguments as with regard to the rejection of claim 1. Appeal Br. 10. We
affirm the rejection of claim 2 for the same reasons set forth above in regard
to the rejection of claim 1.
CONCLUSION
The rejection of claim 1 as obvious over Aisenbrey in view ofKihira
is affirmed. The rejection of claim 2 as obvious over Aisenbrey in view of
Kihira and further in view of Dunand is affirmed.
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
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