KAWAMURA ELECTRIC, INC. et al.

Patent Trials and Appeals Board

Mar 22, 2022

2021003847 (P.T.A.B. Mar. 22, 2022)

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. 15/678,750 08/16/2017 Haruhiko Murase P170717US00 6085 38834 7590 03/22/2022 WHDA, LLP 8500 LEESBURG PIKE SUITE 7500 TYSONS, VA 22182 EXAMINER RANKINE, TARIKH KANEM ART UNIT PAPER NUMBER 2859 NOTIFICATION DATE DELIVERY MODE 03/22/2022 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 HARUHIKO MURASE, NORIO TAKAHASHI, MAKOTO OGAWA, and MICHIHITO OKADO ____________ Appeal 2021-003847 Application 15/678,750 Technology Center 2800 ____________ Before JEFFREY B. ROBERTSON, MERRELL C. CASHION, JR., and JANE E. INGLESE, Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision finally rejecting claims 1 and 3-5. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as KAWAMURA ELECTRIC, INC. and HONDA MOTOR CO., LTD. Appeal Br. 2. Appeal 2021-003847 Application 15/678,750 2 We REVERSE and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). The invention generally “relates to a charge and discharge device for an electric vehicle to charge and discharge an electric vehicle and a plug-in hybrid vehicle, and especially, relates to a charge and discharge device for an electric vehicle which includes a cable and is to be installed on a wall surface.” Spec. 1. Claim 1 illustrates the invention and is reproduced below from the Claims Appendix of the Appeal Brief: 1. A charge and discharge device for an electric vehicle, comprising: a cable that has a distal end at which a charge connector is provided, the charge connector being coupleable to an electric vehicle to charge and discharge; a holder that holds the charge connector; and a cable suspender that suspends and holds the cable, wherein the holder and the cable suspender are disposed at a housing installed on a wall surface, the cable being extractable from the housing, the housing has a rear side configured to be mounted to a wall surface, a side portion having a tapered surface facing obliquely to said wall surface as viewed in a plan view such that the housing has a greater width at the rear side mounted to the wall surface than at a front surface opposite to said rear surface, and the holder being mounted on the tapered surface, an upper portion of the front surface that is at a height above the holder extends closer to said rear wall than a lower portion of the front surface that is at a height aligned with the holder, Appeal 2021-003847 Application 15/678,750 3 the holder has an oblique surface that slants towards the tapered surface such as to be closer to the tapered surface at an upper portion of the oblique surface than at a lower portion of the oblique surface, the oblique surface having a receiving slot configured to hold the charge connector such that the charge connector extends away from the wall surface when held by the holder, and said tapered surface is one of plural tapered surfaces vertically formed at right and left side portions of the housing and formed from right and left end portions of said front surface of the housing. Appellant requests review of the Examiner’s rejection of claims 1 and 3-5 under 35 U.S.C. § 103 as unpatentable over DeBoer ’990 (US 2013/0020990 A1, published January 24, 1913), Sakurai (US 2010/0315040 A1, published December 16, 2010), Wang (US 2014/0354240 A1, published December 4, 2014), and Oda (US 9,061,597 B2, issued June 23, 2015). Appeal Br. 5; Final Act. 4. OPINION After review of the respective positions the Appellant provides in the Appeal and Reply Briefs and the Examiner provides in the Final Office Action and the Answer, we reverse the Examiner’s prior art rejection of claims 1 and 3-5 for the reasons the Appellant presents.2 We add the following for emphasis. Claim 1 recites a charge and discharge device for an electric vehicle having a housing of a specific design and with the charge holder and charge 2 We limit our discussion to independent claim 1, from which all other claims depend. Appeal 2021-003847 Application 15/678,750 4 connector arranged in a specific configuration with respect to the charge and discharge device housing. We refer to the Examiner’s Final Office Action for a complete statement of the rejection. Final Act. 4-10. The Examiner finds DeBoer ’990 teaches an electrical vehicle (EV) charge device having a housing with the claimed design of a rear side configured to be mounted to a wall surface, a side portion having a tapered surface facing obliquely to said wall surface such that the housing has a greater width at the rear side mounted to the wall surface than at a front surface opposite to said rear surface. Final Act. 4-5; DeBoer ’990 Figure 1A. Appellant argues DeBoer ’990 does not teach the claimed tapered surface because the tapered surfaces 105 of DeBoer ’990’s EV device extend inwardly and not outwardly as claimed. Appeal Br. 7. Appellant also argues that the Examiner points to no portion of DeBoer ’990 that supports the Examiner’s interpretation of the tapered surfaces extending outwardly. Id. at 7-9. Appellant has identified reversible error in the Examiner’s determination of obviousness. We agree with Appellant that DeBoer ’990’s description and Figures are insufficient to establish the slant of surface 105. Id. at 7. The Examiner fails to direct us to any portion of DeBoer ’990 that would lead one skilled in the art to understand that surface 105 slants outwardly as claimed. The Examiner’s explanation in support of the surface 105 slanting outwardly is also insufficient because it is based on a series of DeBoer ’990’s Figures that do not provide appropriate perspective of the slant direction of surface 105. Appeal 2021-003847 Application 15/678,750 5 Ans. 4-7. The additional references the Examiner cites do not overcome the DeBoer ’990’s deficiency we discuss above. Accordingly, we reverse the Examiner’s prior art rejection of claims 1 and 3-5 for the reasons Appellant provides and we give above. New Ground of Rejection We enter the following NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). Claim 1 is rejected under 35 U.S.C. § 103 as unpatentable over DeBoer ’970 (US 9,597,970 B2, issued March 21, 2017)3, Wang, Chin-Ho Kim (US D664,086 S, issued July 24, 2012), and Oda. Claim 1 DeBoer ’970 teaches a charge device 100 for an electric vehicle, comprising a cable 103 with a charge connector 103C at a distal end of the cable, a holder (unnumbered) to hold the charge connector, and a cable suspender in the form of a housing lip that suspends and holds the cable. DeBoer ’970 Figure 1A; col. 5, ll. 5-65. Both the holder and the cable suspender are disposed at a housing 102 installed on a wall surface. Id. DeBoer ’970’s housing 102 has a rear side configured for wall- mounting, right and left side portions on lid 105 having tapered surfaces 3 We rely on DeBoer ’970 as the primary reference because the reference includes a number of figures not present in DeBoer ’990 that better illustrate the features of the disclosed charge device. DeBoer ’970 is based on Application No. 14/614,512, filed February 5, 2015, which is a listed as a continuation of Application No. 13/482,134, filed on May 29, 2012. DeBoer ’990 is also based on Application No. 13/482,134, filed on May 29, 2012. DeBoer ’970 is prior art against the instant Application under either filing date. Appeal 2021-003847 Application 15/678,750 6 facing obliquely to the wall surface such that the housing 102 has a greater width at the rear side mounted to the wall surface than at a front surface (control panel 105C) opposite to the rear surface. DeBoer ’970 Figures 1A, 3C, 3F (compare back of housing 102 with lid 105). Figure 1A shows DeBoer 970’s device has an upper portion of the front surface 105C at a height above the holder extending closer to the rear wall than a lower portion of the front surface 105C that is at a height aligned with the holder. DeBoer ’970 Figures 1A, 3C, 3F. To the extent that Appellant’s argument that a portion of DeBoer 990’s tapered side portion extends inwardly to the front surface (Appeal Br. 7-8; see generally Reply Br.) applies to DeBoer ’970, we note that the claim language only requires that the tapered surface extend outwardly such that the width of the rear surface is greater that the width of the front surface. DeBoer 970’s Figures 3C and 3F teach this. Moreover, the claim language does not require that the tapered surface has the same angled projection at the point where it touches the front surface. Thus, the claim language does not exclude DeBoer 970’s taper configuration for the disclosed side portions. DeBoer ’970 does not teach (1) a charge and discharge device, (2) the claimed holder or its configuration with respect to the housing, including the oblique surface having a receiving slot configured to hold the charge connector such that the charge connector extends away from the wall surface when held by the holder, and (3) a lower portion of the front surface that is at a height aligned with the holder. With respect to difference (1), Wang teaches it is conventional to combine a charge and discharge component into a single device. Wang ¶ 6. Wang teaches that such a device allows for high efficiency use of power by Appeal 2021-003847 Application 15/678,750 7 storing redundant power stored low peak and discharging the power in high peak time. Id. ¶ 11. Therefore, it would have been obvious to one having ordinary skill in the art to modify DeBoer ’970’s charge device to have combined charge and discharge components in view of Wang’s teachings. Id. ¶ 11. With respect to difference (2), DeBoer ’970 teaches placing a holder on a tapered surface below the front surface 105C and not on a side tapered surface as claimed. DeBoer ’970 Figure 1A. Chin-Ho Kim illustrates a charging device comprising a housing having a rear side and vertical right and left side portions angled outwardly such that the sides are facing obliquely to said rear side. Chin-Ho Kim Figures 1, 3. Chin-Ho Kim also shows that the vertical sides are positioned such that the rear surface of the housing has a greater width than the width of the front surface. Id. Chin-Ho Kim further shows that holders for the electrical connectors are placed on the angled side portions. Id. Chin-Ho Kim, thus, suggests that the placement of a holder for a charging connector depends on the design of the charging device’s housing. Therefore, it would have been obvious to one having ordinary skill in the art to place DeBoer ’970’s connector holder on one of the vertical angled tapered surfaces because Chin-Ho Kim shows this configuration to be a known alternative for charge device housings comprising vertical angled surfaces. Appellant argues moving the holder of DeBoer 990’s charging device to a tapered side of the device would necessarily involve restructuring of the front face surface configuration. Appeal Br. 8. Appellant further argues there is no disclosure to lead one skilled in the art to make such a modification. Id. at 8-9. Appeal 2021-003847 Application 15/678,750 8 To the extent Appellant’s argument applies to DeBoer ’970, Appellant’s arguments lack persuasive merit particularly because of our reliance on the newly cited Chin-Ho Kim reference we discuss above. With respect to the claimed holder, Chi-Ho Kim shows at least one holder having an oblique surface slanting towards the angled surface on which it is attached. Chi-Ho Kim Figure 3. The oblique surface of Chi-Ho Kim’s holder is configured so the upper portion of the oblique surface is closer to the angled surface than at a lower portion of the oblique surface. Id. In addition, the particular holder design claimed is well known in the art in light of Oda’s teachings. Oda teaches a holder comprising an oblique surface having a receiving slot to hold a charge connector as claimed. Oda Figure 7B. The oblique surface of Oda’s holder slants towards the surface on which it is placed such as to be closer to the surface at an upper portion of the oblique surface than at a lower portion of the oblique surface. Id. Thus, it would have been obvious to one of ordinary skill in the art to replace DeBoer ’970’s holder with another conventional holder, such as the one Oda teaches, because it would be a simple substitution of one known element for another to obtain predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Placing Oda’s holder on DeBoer ’970’s side tapered surface results in the claimed holder/tapered surface configuration. With respect to difference (3), having a lower portion of the front surface that is at a height aligned with the holder, Oda also teaches this configuration as conventional when arranging a charge holder in position offset from operation display panel (front surface). Oda Figures 2A, 7B. Thus, it would have been obvious to one having ordinary skill in the art to adopt this configuration in DeBoer ’970’s charge device to arrange the Appeal 2021-003847 Application 15/678,750 9 lower portion of the front surface (control panel 105C) with respect to a holder placed on DeBoer ’970’s side panel in view of Oda’s teachings. Our new ground of rejection focuses only on independent claim 1. We leave to the Examiner the evaluation of the patentability of dependent claims 3-5 over the combined teachings of DeBoer ’970, Wang, Chin-Ho Kim, and Oda. The fact that we have not addressed dependent claims 3-5 in the new ground of rejection should not be construed to mean that we consider these claims to be directed to patentable subject matter or to be patentable over the prior art. CONCLUSION The Examiner’s prior art rejection of claims 1 and 3-5 is reversed. We enter a new ground of rejection for claim 1 under 35 U.S.C. § 103. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 3-5 103 DeBoer ’990, Sakurai, Wang, Oda Mattson, Horgan, Zhang 1, 3-5 1 103 DeBoer ’970, Wang, Chin-Ho Kim, Oda 1 Overall Outcome 1, 3-5 1 Appeal 2021-003847 Application 15/678,750 10 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). REVERSED; 37 C.F.R. § 41.50(b)