Ex Parte Kondo

Board of Patent Appeals and Interferences

Sep 28, 2005

09732787 (B.P.A.I. Sep. 28, 2005)

1 Application for patent filed December 11, 2000, which claims the
foreign filing priority benefit under 35 U.S.C. § 119 of the Japanese
Application No. P.HEI.11-350661, filed December 9, 1999.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MASAYUKI KONDO
____________
Appeal No. 2005-0564
Application No. 09/732,7871
____________
HEARD: MAY 4, 2005
____________
Before KRASS, BARRY and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 4 and 6-8. Claims 1-3 and 5 have been
cancelled.
We affirm.
BACKGROUND
Appellant’s invention relates to a waterproofed terminal
connecting portion of a sheathed wire wherein a terminal fitting
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Application No. 09/732,787
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and a bare conductor of the sheathed wire are connected with each
other by a molded resin portion. An understanding of the
invention can be derived from a reading of exemplary independent
claim 4, which is reproduced as follows:
4. A terminal structure of a sheathed wire, comprising:
a terminal fitting;
a terminal connecting portion at a rear end portion of the
terminal fitting at which the terminal fitting and a bare
conductor of the sheathed wire is connected; and
a molded portion which covers and waterproofs at least the
terminal connecting portion,
wherein a circumferential size of the molded portion from a
part corresponding to the terminal connecting portion is
continuously reduced, so that a rear end portion of the molded
portion has a same diameter as a diameter of the sheathed wire,
and
wherein there is no increase in the circumferential size of
the molded portion in a first direction parallel to a direction
in which the terminal fitting extends, as the circumferential
size of the molded portion is continuously reduced.
The prior art references of record relied upon by the
Examiner in rejecting the appealed claims are:
Hauchard et al. (Hauchard) 4,969,845 Nov. 13, 1990
Gerrans, Jr. (Gerrans) 5,885,108 Mar. 23, 1999
Appellant’s admitted prior art, as depicted in Figure 6 of
the instant application.
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Claims 4 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the admitted prior art and Gerrans.
Claims 6 and 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the admitted prior art and Gerrans and further
in view of Hauchard.
Rather than reiterate the opposing arguments, reference is
made to the briefs and answer for the respective positions of
Appellant and the Examiner. Only those arguments actually made
by Appellant have been considered in this decision. Arguments
which Appellant could have made but chose not to make in the
brief have not been considered (37 CFR § 41.67(c)(1)(vii)).
OPINION
The Examiner relies on the admitted prior art for teaching
all the elements of the recited claim except for the continuously
reduced portion (answer, page 3). The Examiner, however, reasons
that the missing limitation is disclosed by Gerrans as molded
portion 16 wherein the continuously reduced portion, in its rear
end portion, has the same diameter as that of cable 22 and
provides a smoother grip on the molded portion (id.).
Appellant argues that providing a “smoother grip” is nowhere
disclosed in Gerrans (brief, page 5; reply brief, page 2).
Appellant further asserts that it would not be clear how the
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Application No. 09/732,787
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smoother grip of the outer covering 16 in Gerrans may be
incorporated in the admitted prior art since the disclosure does
not disclose where and/or how it would be gripped (brief, page
5). Appellant further points out that even if the electrical
connector of Gerrans would be held, one would hold it at
foundation portion 9 nearest to the interface, and not at outer
covering 16 (reply brief, page 4).
In response, the Examiner argues that covering 16 of Gerrans
provides a smoother grip by avoiding sharp or pointy edges that
may be uncomfortable to a user’s hand (answer, pages 5 & 6).
Furthermore, the Examiner asserts that absent a specific
holding/handling portion, the housing itself functions as the
holding portion (answer, page 6).
As a general proposition, in rejecting claims under 35
U.S.C. § 103, the examiner bears the initial burden of presenting
a prima facie case of obviousness. See In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) and In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). A
prima facie case of obviousness is established when the teachings
of the prior art itself would appear to have suggested the
claimed subject matter to one of ordinary skill in the art. See
In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir.
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Application No. 09/732,787
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1993); In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780,
1783-84 n.14 (Fed. Cir. 1992); Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988);
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985). In considering the
question of the obviousness of the claimed invention in view of
the prior art relied upon, the Examiner is expected to make the
factual determination set forth in Graham v. John Deere Co., 383
U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references to
arrive at the claimed invention. See also In re Rouffet, 149
F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). However,
the motivation, suggestion or teaching may come explicitly from
statements in the prior art, the knowledge of one of ordinary
skill in the art, or, in some cases the nature of the problem to
be solved. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d
1614, 1617 (Fed. Cir. 1999).
Our review of Gerrans shows that although the reference does
not explicitly describe how the outer shape of the electrical
connector may affect gripping the connector, the disclosed
embodiments clearly show that the outer shape of the molding is
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selected with ease of gripping in mind. In view of what the
overall teachings of Gerrans would have suggested to one of
ordinary skill in the art, we find the Examiner’s proposed
combination of the admitted prior art and Gerrans to be
reasonable. Gerrans relates to an electrical connector assembly
wherein a part of the cable attached to the connector is
encapsulated in molded coating 16 which covers and waterproofs a
part of the connecting portion and the attached cable (Figure 1;
col. 3, lines 58-63). Gerrans in Figure 1 also shows a terminal
fitting as the connector C with terminal fitting shown as 1 and
11 which is connected a sheathed wire 22. In fact, as contended
by Appellant (reply brief, page 3), the ridged contour of the
insert base 4 (Figures 1 & 1A) and the connector piece 30
(Figures 2 & 2A) provide the firm and non-slip grip for handling
of the connector. Therefore, the “smoother grip” due to the
narrowing profile of covering 16 does not appear to contradict
the firm grip around foundation portion 9 and ridge 4 in Figure
1.
Although the quality of the grip is not specifically
discussed in Gerrans, we remain unconvinced by Appellant’s
arguments that the absence of sharp or pointy edges may not
necessarily provide smoother gripping (reply brief, page 6). In
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urging this argument, Appellant ignores the knowledge of ordinary
skill in the art, the need for gripping these kind of connecters
for connecting them to the electrical contacts and the general
teaching of Gerrans, as shown in figures 1 and 2. A motivation
to combine prior art references may be found in the nature of the
problem to be solved. Ruiz v. A.B. Chance Co., 357 F.3d 1270,
1276, 69 USPQ2d 1686,1690 (Fed. Cir. 2004). Here, as argued by
the Examiner (answer, page 5), the contoured shape of the molded
portion of Gerrans “provides a smoother gripping by avoiding
substantially sharp or pointy edges that may be uncomfortable to
a user’s hand” and easier holding of the connector may be
achieved.
In view of the analysis above, we find the Examiner’s
reliance on the combination of the admitted prior art and Gerrans
to be reasonable and sufficient to support a prima facie case of
obviousness. Accordingly, the 35 U.S.C. § 103 rejection of claim
4 as well as claim 7, grouped with claim 4 as standing or falling
together (brief, page 4), over the admitted prior art and Gerrans
is sustained.
Turning now to the rejection of claims 6 and 8, we note
Appellants’ only argument with respect to Hauchard’s failure in
making up for the alleged deficiency in the combination of the
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admitted prior art and Gerrans (brief, page 7). However, the
Examiner’s discussion of Hauchard and its teachings related to
the concave grooves and convex ribs as well as the desirability
of providing structural strength without added material (answer,
page 4) also reasonably support a prima facie case of
obviousness. Therefore, the 35 U.S.C. § 103 rejection of claims
6 and 8 over the admitted prior art, Gerrans and Hauchard is also
sustained.
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 4 and 6-8 under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
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Application No. 09/732,787
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