Ex parte ENDO et al.

Board of Patent Appeals and Interferences

Apr 16, 2001

08922521 (B.P.A.I. Apr. 16, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TAKAYOSHI ENDO and TOSHIAKI OKABE
____________
Appeal No. 2000-2163
Application No. 08/922,521
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HEARD: April 3, 2001
____________
Before FRANKFORT, McQUADE, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 6, which are all of the claims
pending in this application.
We REVERSE.
BACKGROUND
Appeal No. 2000-2163 Page 2
Application No. 08/922,521
The appellants' invention relates to a method of press-
connecting a coated electric wire with a press-connecting
terminal (claims 1-2) and an apparatus for press-connecting a
coated electric wire with a press-connecting terminal (claims
3-6). A copy of the claims under appeal is set forth in the
appendix to the appellants' brief.
The prior art of record relied upon by the examiner in
rejecting the appealed claims is:
Keen et al. (Keen) 4,107,838 Aug. 22,
1978
In addition, the examiner also relied upon the appellants'
admission of prior art (specification, page 1, line 7 to page
4, line 2; Figures 5-11) relating to a method of and apparatus
for press-connecting a coated electric wire with a press-
connecting terminal (Admitted Prior Art).
Claims 1 to 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the Admitted Prior Art in view of
Keen.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
Appeal No. 2000-2163 Page 3
Application No. 08/922,521
rejection, we make reference to the final rejection (Paper No.
4, mailed January 19, 1999) and the answer (Paper No. 13,
mailed March 22, 2000) for the examiner's complete reasoning
in support of the rejection, and to the brief (Paper No. 12,
filed December 23, 1999) and reply brief (Paper No. 14, filed
May 11, 2000) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art, and to the respective
positions articulated by the appellant and the examiner. Upon
evaluation of all the evidence before us, it is our conclusion
that the evidence adduced by the examiner is insufficient to
establish a prima facie case of obviousness with respect to
the claims under appeal. Accordingly, we will not sustain the
examiner's rejection of claims 1 to 6 under 35 U.S.C. § 103.
Our reasoning for this determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
Appeal No. 2000-2163 Page 4
Application No. 08/922,521
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
Claim 1 differs from the Admitted Prior Art by reciting
the following heating step:
before the coated electric wire is press-connected with
the press-connecting terminal, the coating portion of the
coated electric wire is heated and softened so that a
force necessary for pressing the coated electric wire
into the notched slot [of the press-connecting terminal]
is reduced to be not larger than a predetermined value,
wherein the heated and softened areas of the coating
portion of the coated electric wire remain on the coated
electric wire as it is forced into the press-connecting
terminal.
Claim 3 differs from the Admitted Prior Art by reciting:
heating means for heating and softening the coating
portion of the coated electric wire so that a force
necessary for pressing the coated electric wire into the
notched slot [of the press-connecting terminal] is
Appeal No. 2000-2163 Page 5
Application No. 08/922,521
reduced to be not larger than a predetermined value
before the coated electric wire is press-connected with
the pressconnecting terminal, wherein the heated and
softened areas of the coating portion of the coated
electric wire remain on the coated electric wire as it is
forced into the press-connecting terminal.
The appellants argue that the applied prior art does not
suggest the claimed subject matter. Specifically, the
appellants argue that the heating step of claim 1 and the
heating means of claim 3 is not taught or suggested by the
applied prior art. We agree.
Keen teaches the use of an electrical heat coil 56 to
soften a narrow annular section 32JA of a cable jacket 32J, as
shown in Figure 7, to permit desheathing of leading portion
32JLE of the cable jacket to expose cable wires 31 of the
cable 32 for connection of the exposed wires to their
respective terminals 33TG or 33TS in cable connector plug 33.
Keen does not teach or suggest heating and softening the
coating portion of a coated electric wire so that a force
necessary for pressing the coated electric wire into a notched
slot of a press-connecting terminal is reduced to be not
Appeal No. 2000-2163 Page 6
Application No. 08/922,521
larger than a predetermined value before the coated electric
wire is press-connected with the pressconnecting terminal,
wherein the heated and softened areas of the coating portion
of the coated electric wire remain on the coated electric wire
as it is forced into the press-connecting terminal. Thus, we
see no motivation in the applied prior art for a person having
ordinary skill in the art at the time the invention was made
to have modified the Admitted Prior Art to arrive at the
method of claim 1 or the apparatus of claim 3. At best, the
combined teachings of the applied prior art would have
suggested desheathing the coated electric wire of the Admitted
Prior Art as taught by Keen prior to insertion of the wire
into the press-connecting terminal.
In our view, the only suggestion for modifying the
Admitted Prior Art in the manner proposed by the examiner to
meet the above-noted limitations stems from hindsight
knowledge derived from the appellants' own disclosure. The
use of such hindsight knowledge to support an obviousness
rejection under 35 U.S.C.
Appeal No. 2000-2163 Page 7
Application No. 08/922,521
§ 103 is, of course, impermissible. See, for example, W. L.
Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984). It follows that we cannot sustain the examiner's
rejections of claims 1 to 6.
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Application No. 08/922,521
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 6 under 35 U.S.C. § 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-2163 Page 9
Application No. 08/922,521
SUGHRUE MION ZINN MACPEAK & SEAS
2100 PENNSYLVANIA AVE NW
WASHINGTON, DC 20037
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Application No. 08/922,521
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