Ex Parte Hashizawa et al

Patent Trials and Appeals Board

Apr 30, 2019

14277438 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/277,438 05/14/2014 Shigemi Hashizawa
39083 7590 05/02/2019
KENEALY VAIDYA LLP
3000 K Street, N.W.
Suite 200
Washington, DC 20007
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.
6006-0122 7261
EXAMINER
CAZAN, LIVIUS RADU
ART UNIT PAPER NUMBER
3729
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
avaidya@kviplaw.com
uspto@kviplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIGEMI HASHIZA WA, HIDEHIRO ICHIKAWA, and
EIICHI TORY AMA 1
Appeal2018-006281
Application 14/277,438
Technology Center 3700
Before MICHAEL L. HOELTER, NATHAN A. ENGELS, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a Decision on Appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 1-3. App. Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b ). For the reasons explained below, we do not find
error in the Examiner's rejection of these claims.
Accordingly, we AFFIRM the Examiner's rejections.
1 "The real party in interest is Yazaki Corporation." App. Br. 3. We
proceed on the basis that, for purposes of this Appeal, Y azaki Corporation is
the "Appellant."
Appeal2018-006281
Application 14/277,438
CLAIMED SUBJECT MATTER
The disclosed subject matter relates "to a method for manufacturing a
high voltage wire harness to be arranged in a movable body, such as an
automobile." Spec. 1:14--15. Claims 1 and 2 are independent. Claim 1 is
illustrative of the claims on appeal, and is reproduced below.
1. A method for manufacturing a wire harness, comprising:
preparing a coaxial composite wire in which a plurality
of conductive paths are coaxially arranged;
inserting the coaxial composite wire into a tubular body;
treating ends of the conductive paths in a state the coaxial
composite wire is inserted into the tubular body so that the ends
of the conductive paths have a plus circuit and an electric wire
for a minus circuit;
bending the tubular body to form a wire harness having a
shape corresponding to an arrangement pathway, in a state
where the ends of the conductive paths are treated;
forming one of a braid and a metallic foil into an
electromagnetic shield member; and
forming an electromagnetic shield structure on each end
of one of the coaxial composite wire and the tubular body
before bending the tubular body or after bending the tubular
body, by using the electromagnetic shield member.
Kihira
Masuoka2
REFERENCES
US 2004/0099427 Al
JP 56-050489 B
THE REJECTION ON APPEAL
May 27, 2004
Nov. 30, 1981
Claim 1-3 are rejected under 35 U.S.C. § I03(a) as unpatentable over
Kihira and Masuoka.
2 We rely on the English language translation of this document.
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Appeal2018-006281
Application 14/277,438
ANALYSIS
Appellant argues claims 1-3 together. App. Br. 10-13. We select
claim 1 for review, with claims 2 and 3 standing or falling therewith. See 37
C.F.R. § 4I.37(c)(l)(iv).
The Examiner relies on Kihira for disclosing three wires arranged as
claimed but acknowledges that the three wires are not "coaxial" as recited.
Final Act. 2--4. The Examiner relies on Figures 2 and 4 of Masuoka for
disclosing a similar "coaxial cable" arrangement. Final Act. 4 ( also
referencing Masuoka Fig. 5). The Examiner concludes that it would have
been obvious "to modify the process of Kihira by utilizing ... a coaxial
composite wire of the type disclosed by Masuoka." 3 Final Act. 4.
Claim 1 is directed to inserting coaxial composite wire into a tubular
body and then treating the wire ends thereof. Thereafter, claim 1 recites,
"bending the tubular body to form a wire harness ... in a state where the
ends of the conductive paths are treated." Appellant contends that the
references "Fail to Disclose Bending" as recited (i.e., after treatment of the
wires). App. Br. 1 O; see also id. at 11 ("Kihira fails to disclose when to
produce the bends"); Reply Br. 2 ("Kihira and Masuoka Fail to Disclose
the Claimed Order of the Bending and Treatment Process").
Regarding the recited order of treating (terminating) the wire ends
before bending, the Examiner states that the bending of Kihira's wired tube
"could be performed either before or after attaching terminals 40, and both
possibilities are therefore implied." Final Act. 5. The Examiner reiterates,
3 "Masuoka is relied upon for its teaching of a coaxial composite wire as a
substitute for the three separate wires" of Kihira. Ans. 4.
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Application 14/277,438
"bending the tubular body 51 [ of Kihira] either before or after attaching the
terminals are equally obvious possibilities." Final Act. 5; see also Ans. 7
("as a matter of choosing[] from among a limited number of possible orders
of manufacturing steps").
Kihira teaches "wire-side terminals fixedly secured to the two end
portions of each of the three wires 30." Kihira ,r 22. Kihira also discloses a
"cylindrical-shaped pipe made of metal" (i.e., item 51) that "has an inside
diameter that allows the three wires 30 to be inserted." Kihira ,r 26. Kihira
further states, "[t]he main shield portion 51 is bent along the wiring route of
the wire harness 1." Kihira ,r 26 (italics added). Kihira does not explicitly
disclose the order of this treatment/bending operation.
Although we agree with Appellant that "Kihira is silent" (App. Br. 11;
see also Reply Br. 3) as to the exact order involved, the Examiner's rejection
is based on obviousness, not anticipation. The question is whether one
skilled in the art would have found it obvious at the time of the invention to
choose from among the few possibilities reasonably presented by Kihira.
See Ans. 6, 7. We believe the Examiner has the better of this argument.
Further, Appellant does not explain how it would not have been obvious to
select from among these limited possibilities. Instead, Appellant's argument
is based on Kihira' s silence, and does not take into account "the inferences
and creative steps that a person of ordinary skill in the art would employ."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
Appellant additionally contends that the Examiner asserts that the
order of the bending "is inherently disclosed by Kihira." App. Br. 12; see
also id. at 13; Reply Br. 3. The Examiner did not rely on the manufacturing
order being "inherently disclosed" as asserted. See Ans. 9-10. Instead, the
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Appeal2018-006281
Application 14/277,438
Examiner stated that the possible order of the operations in Kihira are few
and that each are "equally obvious possibilities" to choose from, concluding
that "both possibilities are therefore implied." Final Act. 5; see also Ans. 6,
7, 10. Hence, Appellant's arguments, premised on a theory of inherency, is
misplaced.
Appellant also contends that "Kihira does not explicitly disclose how
the bent[] main shield body 51 is made." App. Br. 12. "Appellant
respectfully submits that it is equally possible that a casting process or a
molding process can be used to produce the shape of the bent main shield
portion 51." App. Br. 12. We disagree with Appellant. Kihira clearly states
that the cylindrical pipe 51 "is bent." Kihira ,r 26. Kihira does not teach that
the pipe is cast or molded. In fact, the Examiner points out that if the pipe
were cast or molded, "it is unclear how a core could be removed," especially
since Kihira' s item 51 "has numerous bends." Ans. 8 (referencing Kihira
Fig. 1).
The Examiner further questions the criticality of the recited order
stating that once the wires are inserted, "it does not appear it would make
any difference whether the terminals are attached to the wires prior to
bending the pipe or after bending the pipe." Ans. 6-7; see also id. at 10. In
short, the Examiner states, "the order of the bending and attaching steps can
be reversed without any negative consequences." Ans. 7. Appellant
disagrees, asserting that bending the pipe before or after wire insertion
makes a difference affecting whether or not the wire ends are "ragged and
uneven" due to "different bend radii of the wires." Reply Br. 4. Appellant
is addressing the affect bending has on the resulting wire end arrangement.
The Examiner, on the other hand, is addressing the affect bending has on the
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Application 14/277,438
treatment of the wire ends. Wire end location and treatment of these ends
are not the same. Appellant does not explain how bending has any critical
effect on the ability to treat the wire ends ( whether or not the wire ends are
"ragged and uneven"). Further, claim 1 recites wire insertion prior to
bending and thus Appellant's device suffers the same "ragged and uneven"
result which is argued as a distinction.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1-3 as being obvious over Kihira and
Masuoka.
DECISION
The Examiner's rejection of claims 1-3 under 35 U.S.C. § 103(a) 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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