Ex Parte Ootsuki

Board of Patent Appeals and Interferences

Apr 29, 2010

11213731 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HIROYUKI OOTSUKI
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Appeal 2009-004520
Application 11/213,7311
Technology Center 2800
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Decided: April 29, 2010
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Before ROBERT E. NAPPI, KENNETH W. HAIRSTON, and MARC S.
HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Sumitomo Wiring Systems, Ltd.
Appeal 2009-004520
Application 11/213,731

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention relates to a system and method for
waterproofing a terminal splice at a location where strands from a plurality
of wire terminals are connected (¶ 0002). The method includes heat
shrinking a tube having a stopper inserted at a first end, forming a cap
having an end closure; injecting a fluid waterproofing agent into the cap
through the second opening; inserting a terminal splice through the second
opening, immersing the splice in the waterproofing agent; and heating the
cap to heat-shrink the heat shrinkable tube and accelerate hardening of the
waterproofing agent (¶ 0007).
Claim 1 is exemplary of the claims on appeal:
1. A method of waterproofing a terminal splice comprising:
providing a heat shrinkable tube, said heat shrinkable tube having a
first opening and a second opening;
inserting a stopper in said first opening of said heat shrinkable tube;
heat-shrinking said heat shrinkable tube having said stopper inserted
therein, forming a cap having an end closure;
injecting a fluid waterproofing agent into said cap through said second
opening;
inserting a terminal splice through said second opening of said cap
and immersing said terminal splice in said waterproofing agent; and
heating said cap at a predetermined temperature to heat-shrink said
heat shrinkable tube and to accelerate hardening of said waterproofing agent,
such that generally the entirety of said cap shrinks concurrently with the
hardening of said waterproofing agent.

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Appeal 2009-004520
Application 11/213,731

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Dones US 4,504,699 Mar. 12, 1985
Spiteri, Sr. US 5,315,066 May 24, 1994
Claims 1-5, 8, 9, 11-18, and 20-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dones in view of Admitted Prior Art
(APA).
Claims 6, 7, 10, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dones in view of APA and Spiteri.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed November 17, 2006), the Reply Brief (“Reply Br.,” filed
June 25, 2007) and the Examiner’s Answer (“Ans.,” mailed April 24, 2007)
for their respective details.

ISSUES
Appellants argue that the Examiner erred in rejecting the claims
because the hot-melt adhesive of Dones is not a waterproofing agent (App.
Br. 12); because APA does not teach a heat shrinkable cap, or heat shrinking
a cap around wires and waterproofing agent (App. Br. 12); because Dones
does not teach that wires are spliced together, nor connected to each other
during heating (App. Br. 13); and because the proposed modification would
destroy the device and operation of Dones (App. Br. 13, Reply Br. 2-3).
Appellants’ contentions present us with the following issues:
Does Dones teach a waterproofing agent as claimed?
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Application 11/213,731

Does the combination of Dones and APA teach or suggest a heat
shrinkable cap, and heat shrinking a cap around the wires and the
waterproofing agent?
Does the combination of Dones and APA teach or fairly suggest the
use of spliced wires?
Would the Examiner’s proposed modification destroy the device and
operation of Dones?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. Appellants admit that a conventional method to electrically
connect wires of a wire harness routed in an automobile is to weld and join
strands Wa stripped from a plurality of wire terminals W to form a terminal
splice Y. A specified amount of waterproofing agent 2 is injected into cap 1
from an injector and terminal splice Y of each wire W is inserted into cap 1.
Then, waterproofing agent 2 is hardened to seal terminal splice Y (¶ 0003;
Fig. 6).
Dones
2. Dones teaches that when conductors 6 are in place the sleeve 1
is heated (or otherwise recovered). Heating causes the solder to melt, thus
connecting the conductors together and to the retaining plate 4, and also
causes the adhesive ring 2 to melt and the open end of the sleeve 1 to shrink.
The result is an environmentally sealed electrical connection. If desired the
article may be so formed and recovered that the sleeve 1 recovers into snug
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Application 11/213,731

engagement with the conductors over substantially the entire length of the
sleeve (col. 5, l. 61 – col. 6, l. 3).

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). The test of obviousness is what the
combined teachings would have suggested to those of ordinary skill in the
art. Id. at 425.

ANALYSIS
CLAIM 1
Appellants argue that the Examiner erred in rejecting claim 1 for
several reasons: (a) the hot-melt adhesive 2 taught by Dones does not
correspond to the claimed waterproofing agent (App. Br. 12); (b) in Dones,
wires are not immersed in the hot-melt adhesive (App. Br. 12); (c)
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Appellants’ Admitted Prior Art (APA) fails to teach or suggest providing a
heat shrinkable cap, or heat shrinking the cap around the wires and the
waterproofing agent (App. Br. 12); (d) because Dones discloses that the
stripped ends of the wires 6 are soldered into the tube during heating to heat
shrink the tube, the wires are not spliced together as in the claimed
invention, nor are they connected to each other before heating occurs (App.
Br. 13); (e) the Dones operation and device would likely be destroyed by the
Examiner’s proposed modification, because there is no indication in the
prior art that the proposed modification would operate properly if at all, and
because any waterproofing agent or other additional substance may interfere
with the soldering of the stripped wires (App. Br. 13).
We are not persuaded by Appellants’ arguments. First, the Examiner
finds, and we agree, that Dones teaches that hot-melt adhesive 2 melts
during heating, resulting (with other components) in an environmentally
sealed electrical connection (Ans. 10; FF 2). We agree with the Examiner’s
reasoning that an environmentally sealed apparatus would perform a
waterproofing function (Ans. 11). Thus, we agree with the Examiner that
Dones’s hot-melt adhesive meets the claimed waterproofing agent.
Second, Appellants’ arguments that Dones does not teach wires
immersed in the claimed waterproofing agent, or wires spliced together
and/or connected together before heating, are not germane to the Examiner’s
rejection. The Examiner relies on APA, not Dones, to teach the limitations
of immersing a terminal splice in a waterproofing agent (Ans. 6, 12), and of
a known waterproof terminal splice (Ans. 12). Third, Appellants’ argument
that APA does not teach providing a heat shrinkable cap or heat shrinking
the cap around the wires and the waterproofing agent is also not germane to
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the rejection at issue, because the Examiner relies on Dones, rather than
APA, to teach these limitations (Ans. 3-4, 11). These arguments
impermissibly attempt to show nonobviousness by attacking individual
references, where the rejection is based on a combination of references.
Keller, 642 F.2d at 425.
Appellants’ last argument that the operation and device of Dones
would likely be destroyed by the proposed modification (App. Br. 13), is
similarly unpersuasive. Appellants’ contention that the Examiner has not
provided explanation or description, or cited to any teaching, as to the result
and effect on the stripped wires and the soldering of the stripped wires of
Dones if heated while immersed in waterproofing agent (Reply Br. 3),
mischaracterizes the Examiner’s asserted combination. The Examiner
proposes (Ans. 7) to modify the waterproof connector of Dones to comprise
the known waterproof terminal splice taught in APA (FF 1), and immersing
said terminal splice in a waterproofing agent in a known manner (FF 1). As
such, there is no need for the Examiner to explain any result and effect on
the stripped wires and/or soldering of said stripped wires of Dones, because
the Examiner proposes to substitute the terminal splice taught by APA for
them. We regard the substitution of the known components of the admitted
prior art into Dones as nothing more than the combination of familiar
elements according to known methods, yielding the predictable result of an
environmentally sealed electrical connection, just as Dones teaches.
Appellants’ arguments are not persuasive for the Board to find error in
the Examiner’s § 103 rejection of claim 1 as unpatentable over Dones in
view of APA. We will therefore sustain the rejection.
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CLAIM 2
Appellants assert that claim 2 is patentable for the reasons expressed
with respect to claim 1, and further because Dones does not disclose heating
the entire cap (App. Br. 14). Appellants’ argument is not persuasive to show
error in the Examiner’s rejection, because Dones teaches that when the
conductors 6 are in place the sleeve is heated, connecting the conductors
together and resulting in an environmentally sealed electrical connection, the
sleeve recovering into snug engagement with the conductors over
substantially the entire length of the sleeve (FF 2).
We therefore sustain the Examiner’s rejection of claim 2 under § 103
as unpatentable over Dones in view of APA.
CLAIMS 3-5, 8, 9, 11
Appellants present no separate argument for the patentability of these
claims, relying instead on the arguments made for the patentability of parent
claim 1. Because we sustain the rejection of claim 1 supra, then, we will also
sustain the rejection of claims 3-5, 8, 9, and 11, for the same reasons.
CLAIM 12
Independent claim 12 is asserted to be patentable for the same reasons
Appellants asserted with respect to independent claim 1. Because we sustain
the rejection of claim 1 supra, then, we will also sustain the rejection of
independent claim 12, for the same reasons.
CLAIM 13
Appellants assert that claim 13 is patentable for the reasons expressed
with respect to claim 12, and further because Dones does not disclose that its
waterproof agent is a cured fluid (App. Br. 26). Appellants’ argument is not
persuasive to show error in the Examiner’s rejection, because Dones teaches
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that when the conductors 6 are in place the sleeve is heated, which causes
the adhesive ring 2 to melt and resulting in an environmentally sealed
electrical connection (FF 2). As discussed with reference to claim 1 supra,
we agree with the Examiner’s finding that hot-melt adhesive 2 meets the
recitation of a “waterproof agent.” Dones therefore teaches that its
waterproof agent is a cured fluid.
We therefore sustain the Examiner’s rejection of claim 13 under § 103
as unpatentable over Dones in view of APA.
CLAIMS 14-18 AND 20-24
Appellants present no separate argument for the patentability of these
claims, relying instead on the arguments made for the patentability of parent
claims 1 and 12. Because we sustain the rejection of claims 1 and 12 supra,
then, we will also sustain the rejection of claims 14-18 and 20-24, for the
same reasons.
CLAIMS 6, 7, 10, AND 19
Appellants present no separate argument for the patentability of these
claims, relying instead on the arguments made for the patentability of parent
claims 1 and 12. Because we sustain the rejection of claims 1 and 12 supra
as being obvious over the combination of Dones and APA, we will also
sustain the rejection of claims 6, 7, 10, and 19 as being obvious over the
combination of Dones, APA, and Spiteri, for the same reasons.

CONCLUSIONS
Dones teaches a waterproofing agent as claimed.
The combination of Dones and APA teaches a heat shrinkable cap,
and heat shrinking a cap around the wires and the waterproofing agent.
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The combination of Dones and APA teaches the use of spliced wires.
The Examiner’s proposed modification would not destroy the
operation of Dones.
ORDER
The Examiner’s rejection of claims 1-24 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)(1)(iv).
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AFFIRMED

ELD

GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
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