Ex Parte Kitaguchi et al

Patent Trial and Appeal Board

Feb 14, 2019

13388905 (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/388,905 02/03/2012 Asami Kitaguchi
38834 7590 02/19/2019
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
UNITED ST A TES OF AMERICA
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.
P22714USOO 4888
EXAMINER
TIGHE, DANA K
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
02/19/2019 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASAMI KITAGUCHI and NOBUKAZU KIKUCHI
Appeal2017-001844
Application 13/3 88,905
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM V. SAINDON, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Asami Kitaguchi and Nobukazu Kikuchi ("Appellants") 1 appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 3-8, 10,
and 12-20, which are all the pending claims. See Appeal Br. 3-8. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ). An oral hearing was
held on September 20, 2018.
We REVERSE.
According to Appellants, the real party in interest is HONDA
MOTOR CO., LTD. Appeal Br. 2.
Appeal2017-001844
Application 13/388,905
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "relates to a cooling structure for
vehicle high-voltage electric parts which is effective in taking in cooling air
for cooling high-voltage electric parts used in an electric vehicle or a hybrid
vehicle." Spec. ,r 1. Claim 1, reproduced below with emphasis added, is the
sole independent claim and is representative of the subject matter on appeal.
1. A cooling structure for vehicle high-voltage electric parts
which are disposed behind a rear seat, comprising:
an air inlet passage having an air inlet port which is
disposed higher than a seat cushion of the rear seat and
communicating with the high-voltage electric parts so as to
supply an air inside a passenger compartment to the high-
voltage electric parts to cool the high-voltage electric parts; and
a cooling fan which causes the air inside the passenger
compartment to flow,
wherein a side seatback is disposed transversely outward
of a main seatback of the rear seat, the side seatback
compnsmg:
a transversely inward portion which lies transversely
inwards from a transversely central position of the side seatback
and which is curved so as to gradually project to a front of a
vehicle as it goes away from the main seatback; and
a transversely outward portion which lies transversely
outwards from the transversely central position of the side
seatback and which is formed substantially linearly,
wherein an opening portion for taking in the air inside
the passenger compartment into the air inlet passage opens
toward the front of the vehicle in the substantially-linear
transversely outward portion of the side seatback, and
wherein a seatbelt in an unfastened state is disposed on
the curved transversely inward portion of the side seatback.
2
Appeal2017-001844
Application 13/388,905
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kawai us 5,918,930 July 6, 1999
Musukula us 5,921,605 July 13, 1999
Zhu US 2008/0296075 Al Dec. 4, 2008
Gaboury US 2008/0297136 Al Dec. 4, 2008
Taguchi2 JP 2008-92696 A Apr. 17, 2008
REJECTIONS
The following rejections are before us for review:
I. Claims 1, 3, 4, and 10 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over Taguchi, Gaboury, and Musukula.
Final Act. 3-10.
II. Claims 5, 12, and 13 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Taguchi, Gaboury, Musukula, and
Kawai. Id. at 11-12.
III. Claims 6-8 and 14--19 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over Taguchi, Gaboury, Musukula, and
Zhu. Id. at 12-15.
IV. Claim 20 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Taguchi, Gaboury, Musukula, Kawai, and
Zhu. Id. at 15-16.
2 Reference citations are to an English-language translation of Taguchi
made of record with the Non-Final Office Action dated January 31, 2014.
3
Appeal2017-001844
Application 13/388,905
ANALYSIS
In each of Rejections I-IV, the Examiner relies on a combination of
teachings from Taguchi, Gaboury, and Musukula to reject the subject matter
of the claims as obvious. See Final Act. 3-16. Appellants argue that this
combination is the result of inadequate findings and improper hindsight
reconstruction of the claimed invention, rather than being reached on the
basis of the facts established by the prior art. See Appeal Br. 3-7; Reply
Br. 2-7. We agree.
All the claims recite, in relevant part, "an opening portion for taking
in the air inside the passenger compartment into the air inlet passage [that]
opens toward the front of the vehicle in the substantially-linear transversely
outward portion of the side seatback." Appeal Br., Claims App. (emphasis
added). In rejecting the claims, the Examiner finds that Taguchi discloses
such an opening portion disposed as in the claims. See Final Act. 3-7
(including annotated reproductions of Taguchi's Figure 2 and an enlarged
portion of Taguchi's Figure 2).
However, we agree with Appellants' assertion that Taguchi, as relied
on in the rejection, does not adequately disclose placement of an opening
portion as recited in the claims. See Appeal Br. 5---6; see also Record of Oral
Hearing, p. 5, 1. 3 - p. 6, 1. 9 ( emphasizing the ambiguity as to any disclosure
for specific placement of Taguchi' s opening portion depicted relative to
dotted lines representing rear seat 36). More specifically, although the
Examiner is correct to note that Taguchi teaches placing the opening portion
to avoid contact with an occupant's shoulder and back (to avoid blocking the
vent opening), Taguchi does not sufficiently disclose where to place it, let
4
Appeal2017-001844
Application 13/388,905
alone to place it in a substantially-linear transversely outward portion of the
side seatback as recited in the claims.
In brief, the Examiner's stated finding that Taguchi discloses
placement of an opening portion as recited in the claims is not supported by
a preponderance of the evidence. Rejections based on obviousness must rest
on a factual basis; in making such a rejection, the Examiner has the initial
burden of supplying the requisite factual basis and may not, because of
doubts that the invention is patentable, resort to speculation or unfounded
assumptions to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967).
On the record before us-although it may well be possible that an
opening portion, such as that disclosed in Taguchi, could be disposed as
recited in the claims-the reliance in the rejections on Taguchi falls short of
a sufficiently supported finding that the reference actually discloses such a
placement. In other words, while it is possible that the opening portion of
Taguchi's air passage is disposed in a substantially-linear transversely
outward portion of the side seatback ( as claimed), it appears to be equally
possible that the opening portion of Taguchi' s air passage is disposed instead
in another part of the seating area ( e.g., a side bolster, a trim piece, etc.); this
uncertainty yields insufficient evidentiary support for the rejection. In light
of this deficiency, we do not sustain the rejections.
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 3, 4, and
10 under 35 U.S.C. § 103(a) as being unpatentable over Taguchi, Gaboury,
and Musukula.
5
Appeal2017-001844
Application 13/388,905
We REVERSE the Examiner's decision rejecting claims 5, 12, and 13
under 35 U.S.C. § 103(a) as being unpatentable over Taguchi, Gaboury,
Musukula, and Kawai.
We REVERSE the Examiner's decision rejecting claims 6-8 and
14--19 under 35 U.S.C. § 103(a) as being unpatentable over Taguchi,
Gaboury, Musukula, and Zhu.
We REVERSE the Examiner's decision rejecting claim 20 under
35 U.S.C. § 103(a) as being unpatentable over Taguchi, Gaboury, Musukula,
Kawai, and Zhu.
REVERSED
6