Ex Parte Kondo

Patent Trial and Appeal Board

Feb 6, 2018

13983490 (P.T.A.B. Feb. 6, 2018)

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.
13/983,490 08/02/2013 Hiroki Kondo 6006-0093 4480
39083 7590 02/08/2018
KFNF AT Y VATDYA T T P
EXAMINER
3000 K Street, N.W. AUGUSTIN, CHRISTOPHER L
Suite 310
Washington, DC 20007 ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
02/08/2018 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
u spto @ kviplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROKI KONDO
Appeal 2017-005332
Application 13/983,490
Technology Center 2800
Before DONNA M. PRAISS, JULIA HEANEY, and
MONTE T. SQUIRE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1 and 4—7 as obvious under 35 U.S.C. § 103(a) over
Yoshinokawa3 in view of Aldissi.4 App. Br. 4.
1 In this Decision, we refer to the Specification filed Aug. 2, 2013 (“Spec.”)
(citations are to WO 2012/111858 Al, pub. Aug. 23, 2012), the Final Office
Action entered Oct. 23, 2015 (“Final Act.”), the Appeal Brief filed Apr. 21,
2015 (“App. Br.”), the Examiner’s Answer entered Dec. 22, 2016 (“Ans.”),
the Reply Brief filed Feb. 10, 2017, and the Declaration of Hiroki Kondo
dated June 16, 2015 (“Kondo Deck”).
2 The real party in interest is identified as Yazaki Corporation. App. Br. 3.
3 Yoshinokawa Electric Wire & Cable Co. Ltd., JP 2002-175729, pub. June
21, 2002 (“Yoshinokawa”) (citations are to the English language Abstract).
4 Aldissi, US 5,473,113, iss. Dec. 5, 1995 (“Aldissi”).
Appeal 2017-005332
Application 13/983,490
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to a shielded cable, such as a shielded high-
voltage cable for supplying power to an in-wheel motor employed by the
driving mechanism of an electric vehicle. Spec. 1:6—16. Claim 1 is
illustrative (disputed limitation italicized):
1. A shielded cable, comprising:
at least one conductor;
an insulator with which a surface of the at least one
conductor is coated, the insulator having a Shore A hardness of
10 or more and 90 or less; and
a shield layer disposed on a periphery of the insulator, the
shield layer being formed by braiding plated fibers in which
high-tensile-strength fibers are plated,
wherein the high-tensile-strength fibers have a strength of
2-8 GPa, and
the shield layer is formed by a braid having a braiding
density of 85% or more and 98% or less, and a braid resistance
of0.052 [ohm]/m to 0.096 [ohm]/m.
App. Br. 16 (Claims Appendix).
OPINION
The Examiner determines that claims 1 and 4—7 would have been
obvious to one of ordinary skill in the art at the time of the invention for the
reasons stated on pages 2-4 of the Final Office Action. Appellant separately
argues claim 1 and relies on the same arguments for claims 4—7 (App. Br.
10—14). Accordingly, claims 4—7 will stand or fall with claim 1, from which
they each depend. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues that the Examiner erred in rejecting claim 1 over
Yoshinokawa and Aldissi because
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Application 13/983,490
[b]oth Yoshinokawa and Aldissi fail to disclose at least the
feature of a shield layer that “is formed by a braid having a
braiding density of 85% or more and 98% or less, and a braid
resistance of 0.052 [ohm]/m to 0.096 [ohm]/m,” as recited in
claim 1.
App. Br. 10. Appellant contends that because Aldissi discloses a braiding
density exceeding 90% and a braid of a few milliohms/m, “Aldissi does not
teach or suggest to one skilled in the art that the lower limit of these ranges
can be reduced without compromising the shielding performance of the
shielded cable.” Id. at 12 (quoting Kondo Deck 113) (internal quotation
omitted). Appellant further contends that because one skilled in the art
would not expect “the possibility or the desirability to have reduced the
braiding density or the braid resistance of a shielded cable, as compared to
those disclosed by Aldissi,” the claimed range evidences unexpected results.
Id. at 13 (citing Kondo Deck generally as presenting evidence of unexpected
results). Appellant asserts that “both Example 1 and Example 2 .. . [of the
Specification evidence] greater shielding effect as compared to [the]
Comparative Example [in the Specification].” Id. at 12 (quoting Kondo
Deck 112) (internal quotation omitted). The Comparative Example is said
to be “similar to Aldissi” because the braid resistance falls within Aldissi’s
range of a few hundred milliohms/meter even though the braiding density of
the Comparative Example falls outside of both Aldissi’s disclosed range and
the claimed range. Id. (citing Kondo Deck 19).
Regarding the Kondo Declaration, Appellant further contends that the
Examiner erred by not providing “any discussion regarding consideration of
the evidence presented by the Kondo Declaration and consideration of the
evidence provided by Yoshinokawa and/or Aldissi.” Id. at 14. According to
Appellant, the preponderance of the evidence does not support obviousness
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Application 13/983,490
of claim 1 over Yoshinokawa in view of Aldissi because (1) the Final Office
Action “does not indicate that the Kondo Declaration is deficient for failing
to provide a nexus between the evidence and arguments presented therein
and the merits of the claim 1 ” and (2) the case law cited by the Examiner is
not evidence of obviousness because it is not concerned with braid density
values of a shield layer. Id.
The Examiner responds that claim 1 is not limited to a braid density
less than 90%, therefore, Aldissi’s teaching of a braid density exceeding
90% is encompassed by the claim. Ans. 3. The Examiner also cites
Example 4 of Aldissi with a braid density of 92% as falling within the
claimed range. Id. The Examiner additionally finds that it would have been
expected by a skilled artisan that more or less flexibility as desired would
result from fibers “made thicker or thinner in order to provide looser or
tighter braiding, thereby decreasing or increasing the braid density.” Id.
Similarly, the Examiner finds that the braid resistance disclosed by Aldissi
(0.001 ohm/m to 1 ohm/meter), falls within the claimed range of 0.052
ohm/m to 0.96 ohm/m. Id. (citing Aldissi 3:8—11). Regarding the
comparison made in the Kondo Declaration of Appellant’s Examples in the
Specification, the Examiner finds that Example 2 and not the Comparative
Example falls within the braiding density and braid resistance ranges
disclosed by Aldissi. Id. at 4.
We are not persuaded by Appellant’s arguments for the reasons stated
by the Examiner in the Final Office Action and Answer. We add the
following primarily for emphasis.
Appellant’s arguments focus on differences between Aldissi and claim
1, however, Appellant does not dispute that Aldissi teaches braid density and
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Application 13/983,490
braid resistance ranges that overlap the ranges recited in claim 1. In a
determination of obviousness, such an overlap in ranges is sufficient to
establish a prima facie case of obviousness. In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our
predecessor court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness”). Thus, Appellant’s assertion
that “Aldissi fails to predict... a braiding coverage less than or equal to
90%” (Reply Br. 2) is not relevant to the obviousness analysis because
Aldissi need not disclose precisely the same range as recited in the claim; it
is sufficient that Aldissi overlaps the portion of the claimed range above
90%. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[Analysis
[of whether the subject matter of a claim would have been obvious under
§ 103] need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ”).
Appellant’s reliance on the Specification Examples and the Kondo
Declaration to demonstrate “a nexus between Aldissi and Comparative
Example” as well as “superior results of Example 1 over Comparative
Example, and therefore, Aldissi” (Reply Br. 4) are insufficient to rebut the
prima facie obviousness of claim 1 over Yoshinokawa and Aldissi for a
number of reasons. First, Appellant does not dispute the Examiner’s finding
(Ans. 4) that the Comparative Example does not possess the braid density
taught by Aldissi, therefore the Comparative Example does not correspond
to the teachings of Aldissi. Second, Appellant does not dispute the
Examiner’s finding (Ans. 4) that Example 2 from Appellant’s Specification
and the Kondo Declaration falls within the braiding density and braid
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resistance ranges disclosed by Aldissi. Therefore, Appellant’s assertion that
evidence of superior results over the Comparative Example corresponds to
superior results over Aldissi (Reply Br. 4) is not supported by the record. It
is well settled that an applicant relying on comparative tests to rebut a prima
facie showing of obviousness must compare his claimed invention to the
closest prior art. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
See also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellant has
not done so.
Appellant’s assertion of unexpected results also is insufficient to
outweigh the evidence of obviousness because the results are not
commensurate with the scope of the claim, which recites ranges for, inter
alia, braiding density and braid resistance. In re Harris, 409 F.3d 1339,
1344 (Fed. Cir. 2005) (“[T]he record does not show that the improved
performance would result if the weight-percentages were varied within the
claimed ranges. Even assuming that the results were unexpected, Harris
needed to show results covering the scope of the claimed range”).
“For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention.” Wyers v. Master Lock
Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (internal quotation, emphasis, and
alteration omitted). Where the offered secondary consideration actually
results from something other than what is both claimed and novel in the
claim, there is no nexus to the merits of the claimed invention. Tokai Corp.
v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If
commercial success is due to an element in the prior art, no nexus exists”).
Such a nexus is missing here. Moreover, a party asserting unexpected
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results as evidence of nonobviousness has the burden of proving that the
results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.
1997). “[I]t is not enough to show that results are obtained which differ
from those obtained in the prior art: that difference must be shown to be an
unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Appellant’s argument that “the Examiner’s Answer fails to present
evidence in support of this assertion that unexpected results would not
occur” and that “the Examiner’s Answer fails to establish a nexus between
cable flexibility and braiding density” (Reply Br. 3) does not identify
reversible error by the Examiner. An applicant attempting to establish
unexpected results must do so with clear and convincing evidence. In re
Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It was incumbent upon appellants
to submit clear and convincing evidence to support their allegation of
unexpected . . . property”). See also McClain v. Ortmayer, 141 U.S. 419,
429 (1891) (conclusive evidence needed to establish new function). The
burden is not on the Examiner to establish “unexpected results would not
occur.” Regarding the relationship between flexibility and braiding density,
Appellant does not dispute the Examiner’s finding or reasoning, only that
the Examiner’s explanation for why braiding density would be expected to
affect flexibility is “unsubstantiated by the evidence of record” (Reply Br.
3). Such an argument is insufficient to identify error by the Examiner.
Therefore, we are not persuaded that the Examiner reversibly erred in giving
Appellant’s evidence of unexpected results little or no weight.
Based on the cited record on appeal, we find the preponderance of the
evidence supports the Examiner’s finding that the claimed braiding density
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and braid resistance for a shielded cable would have been obvious to an
ordinarily skilled artisan.
In sum, we affirm the Examiner’s rejection of claim 1 as obvious over
Yoshinokawa and Aldissi.
CONCLUSION
We affirm the Examiner’s rejection of claims 1 and 4—7 as obvious
under 35 U.S.C. § 103(a).
DECISION
The Examiner’s decision 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).
AFFIRMED
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