Ex Parte Kondou et alDownload PDFPatent Trials and Appeals BoardMay 9, 201914003604 - (D) (P.T.A.B. May. 9, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/003,604 09/23/2013 23373 7590 05/13/2019 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Takaya Kondou 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. Q206752 2347 EXAMINER BAILLARGEON, PAUL D ART UNIT PAPER NUMBER 2833 NOTIFICATION DATE DELIVERY MODE 05/13/2019 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKA YA KONDOU, MASANORI ONUMA, and YOSHITAKA ITO Appeal2017-008574 Application 14/003,6041 Technology Center 2800 Before JOSEPH L. DIXON, JAMES W. DEJMEK, and STEPHEN E. BELISLE, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-5. Oral arguments were heard on April 18, 2019. A transcript of the hearing will be placed in the record in due course. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ). We reverse. 1 Appellants identify the Y azaki Corporation as the real party in interest. App. Br. 2. Appeal2017-008574 Application 14/003,604 STATEMENT OF THE CASE Introduction Appellants' disclosed and claimed invention generally relates to a crimping terminal. Spec. ,-J,-J 1, 7. Figure 2 is illustrative and is reproduced below: Figure 2 illustrates an embodiment of a crimping terminal. Spec. ,-J 13. As shown, crimping terminal (10) comprises an electrical connection portion (11 ), which would electrically connect with a mating terminal (not shown); a conductor crimping portion (12); and a sheath crimping portion (15). Spec. ,-J 15. Conductor crimping portion (12) further comprises a pair of conductor crimping tabs (14) and a bottom plate (13). Spec. ,-J 19. Arrayed on the inner surfaces (13a, 14a) of the conductor crimping portion (12) are a plurality of cylindrical recesses (i.e., serrations) (16). Spec. ,-J,-J 19-20. According to the Specification, as part of a wire conductor is 2 Appeal2017-008574 Application 14/003,604 crimped into the crimping terminal the edges of the plurality of recesses (located on inner surfaces 13a and 14a) "tears an oxide coating of the surface of the conductor" such that the wire conductor is in electrical contact with the inner surface of the recesses ( 16) and "the electrical connection resistance decreases." Spec. ,i 24. Regarding the arrangement of the recesses ( 16) on the inner surfaces (13a, 14a) of the conductor crimping portion (12), Figure 8 is illustrative and is reproduced below: 12B 16 22b / ,' 16 16 14a Figure 8 illustrates an expanded view of the conductor crimping portion (12B). Spec. ,i 13. As shown, "recesses arrayed in the X direction may be deviated from each other and partly overlap each other in the Y direction when seen from the X direction." Spec. ,i 38. Appellants assert Figure 8 also illustrates the recesses "partly overlap each other when seen from the widthwise direction Y." App. Br. 6 ( citing Spec. ,i 33). 3 Appeal2017-008574 Application 14/003,604 Claim 1 is representative of the subject matter on appeal and is reproduced below with the disputed limitations emphasized in italics: 1. A crimping terminal comprising: a conductor crimping portion including a bottom plate and a pair of conductor crimping tabs, the conductor crimping tabs being formed extending from both sides of the bottom plate in a widthwise direction perpendicular to a lengthwise direction of the crimping terminal and being configured to crimp a conductor of an electrical cable so as to wrap the conductor, the conductor being formed by a bundle of wires and serving as a crimping subject disposed on the bottom plate along the lengthwise direction, an inner surface of the conductor crimping portion being provided with serrations including a plurality of uniformly cylindrical recesses, with a diameter smaller than a diameter of the wire of the conductor, wherein, in the plurality of recesses, adjacent recesses deviated from each other in the widthwise direction of the crimping terminal partly overlap each other when seen from the lengthwise direction, wherein, in the plurality of recesses, adjacent recesses deviated from each other in the lengthwise direction of the crimping terminal partly overlap each other when seen from the widthwise direction. The Examiner's Rejection Claims 1-5 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ono et al. (US 2011/0009014 Al; Jan. 13, 2011) ("Ono") and Sawada et al. (JP 55-108192; pub. Aug. 19, 1980) ("Sawada"). Final Act. 2-6. 4 Appeal2017-008574 Application 14/003,604 ANALYSIS2 In rejecting the pending claims, the Examiner relies on the combined teachings and suggestions of Ono and Sawada. Final Act. 2-6. We begin our analysis with a brief review of these references. Ono describes a terminal connector that may be crimped onto a conductor of an exposed wire. Ono ,-J,-J 1, 11. Figure 2 of Ono is illustrative and is reproduced below: FIG2 Figure 2 of Ono illustrates the disclosed terminal connector. Ono ,-J 18. Ono describes the terminal connector (12) as comprising a connection portion (17); a wire barrel (16), which corresponds to a wire crimping portion; and an insulation barrel (15), which is crimped to surround the outer periphery of the wire insulation of an electrical wire. Ono ,-J,-J 38-39. Ono describes the inner surface of the wire barrel ( 16) as further comprising a plurality of 2 Throughout this Decision, we have considered the Appeal Brief, filed November 29, 2016 ("App. Br."); the Reply Brief, filed May 25, 2017 ("Reply Br."); the Examiner's Answer, mailed March 27, 2017 ("Ans."); the Final Office Action, mailed July 15, 2016 ("Final Act."), from which this Appeal is taken, and the Transcript ("Tr.") from the oral hearing held April 18, 2019. 5 Appeal2017-008574 Application 14/003,604 recesses (18), wherein the rims (i.e., edges) of the recesses, when crimped, "bite into" the wire conductor. Ono ,i,i 43-45, 61. Figure 3 of Ono is illustrative of the arrangement of the plurality of recesses ( 18) located on the inner surface of the wire barrel and is reproduced below: FIG3 A ..... ~:,,,,,nn,nnn,n,,,n,,,,n,n•••> ,f, I Bj I + 15 Figure 3 of Ono illustrates an enlarged plan view of wire barrel ( 16) before being crimped onto an electrical wire. Ono ,i 41. Ono describes the recesses (18) are arranged in a crossing direction (as shown by arrow B) and an extending direction (as shown by arrow A) wherein the "crossing direction crosses to the extending direction at any angle suitable for [the] intended application." Ono ,i 44. 6 Appeal2017-008574 Application 14/003,604 Sawada also relates to a terminal connector comprising a crimping section. Sawada, Title, 3. 3 Figure 1 of Sawada is illustrative and is reproduced below: Figure 1 of Sawada illustrates an embodiment of the disclosed crimping terminal comprising a male contact part (1 ), a conductor crimping (Sawada refers to this as "sandwiching") part (2), and a cable crimping part (3 ). Sawada 6. Disposed on the inner surface of the conductor crimping part (2) are a plurality of recesses (4). Sawada 6. In relevant part, the Examiner finds Ono teaches a crimping terminal comprising a conductor crimping portion wherein an inner surface of the conductor crimping portion is provided with serrations including a plurality of recesses "wherein, in the plurality of recesses, adjacent recesses deviated from each other in the widthwise direction of the crimping terminal partly overlap each other when seen from the lengthwise direction," as recited in claim 1. Final Act. 2-3. The Examiner notes that the recesses of Ono are not described as "cylindrical" and that Ono does not describe the recesses 3 References to Sawada are made to the English-translated version of the reference. 7 Appeal2017-008574 Application 14/003,604 are arranged such that "adjacent recesses deviated from each other in the lengthwise direction of the crimping terminal partly overlap each other when seen from the widthwise direction." Final Act. 3. However, the Examiner finds Figure 1 of Sawada discloses cylindrical recesses arranged such that adjacent recesses in the lengthwise direction of the crimping terminal partly overlap when viewed from the widthwise direction. Final Act. 3. The Examiner concludes it would have been obvious to one of ordinary skill in the art to substitute the cylindrical recess shape taught by Sawada for the quadrangle-shaped recesses of Ono (i.e., substituting "one known recess shape for another") and further arrange the recesses of Ono such that-in addition to adjacent recesses in the widthwise direction overlapping when viewed from the lengthwise direction-adjacent recesses in the lengthwise direction overlap when viewed from the widthwise direction, as taught by Sawada, to use more area of the crimping portion for crimping the wire conductor with the recesses and "ensuring a consistent crimping connection." Final Act. 3-4. Appellants' arguments generally relate to the Examiner's proposed modification of Ono to further include the cylindrical recesses and recess density (i.e., such that the recesses also overlap when viewed from a widthwise direction in addition to overlapping when viewed from a lengthwise direction) as taught by Sawada. App. Br. 9-13; Reply Br. 4-8. In particular, Appellants argue Ono teaches away from the Examiner's proposed modification of packing more recesses into the crimping portion because Ono describes that further decreasing the distance between recesses is not preferable. App. Br. 9-10 ( citing Ono ,-J,-J 66, 69). Additionally, Appellants argue Ono teaches away from the Examiner's proposed 8 Appeal2017-008574 Application 14/003,604 modification of Ono's quadrangular recesses with the cylindrical recesses of Sawada because the only shapes of recesses described in Ono are quadrangular. App. Br. 11-12 (citing Ono ,i,i 42, 62, 64, 77, 78, Fig. 4); Reply Br. 6-7. Moreover, Appellants assert that changing the shape of Ono's recesses from quadrangular to cylindrical would result in a decrease holding force of the terminal to the wire. App. Br. 12. Relatedly, Appellants argue that modifying the shape of Ono's recesses from quadrangular to cylindrical would frustrate the purpose of Ono and render Ono unsatisfactory for its intended purpose. App. Br. 10-11; Reply Br. 4-6. In particular, Appellants argue Ono's recesses are restricted to a quadrangular shape because (i) this is how Ono provides pressed recesses that still "bite" into the wire, and (ii) quadrangular recesses increase the total area of the core wire into which the edges "bite." App. Br. 10-11; Reply Br. 4-6. Appellants argue modifying the quadrangular recesses to be cylindrical reduces the total area of wire into which the edges "bite." App. Br. 11; Reply Br. 6. Further, Appellants acknowledge Ono may disclose recesses that overlap in the widthwise direction when viewed from the lengthwise direction and that Sawada may disclose recesses that overlap in the lengthwise direction when viewed from the widthwise direction, but assert that "there is no reasonable suggestion to include an overlap in both longitudinal [(i.e., lengthwise)] and widthwise directions .... " App. Br. 12-13 (emphases omitted). In response to Appellants' argument that Ono describes it is not preferable to decrease the distance between recesses, the Examiner explains that, contrary to Appellants' arguments, Ono advocates for an increase in the 9 Appeal2017-008574 Application 14/003,604 density of recesses because this will result in an increased overall length of recess edges and results in an increase to the total area of wire into which the edges bite. Ans. 2 ( citing Ono ,i 61 ). Further, the Examiner explains that Appellants quote Ono out of context. Ans. 2. Specifically, the Examiner explains that Ono describes an excessive load may be applied to the die forming the recesses (i.e., in press working of a metal plate) if the distance between the recesses is excessively small. Ans. 2 ( citing Ono ,i,i 66, 69). Thus, the Examiner finds Ono encourages the movement of recesses closer together "with the caution that excessive closeness should be avoided." Ans. 2. Additionally, the Examiner finds Ono does not criticize, discredit, or discourage one from utilizing cylindrical recesses. Ans. 4. Rather, the Examiner finds that the cylindrical recesses of Sawada are concave (similar to the recesses of Ono) and the concavity provides a perimeter edge to bite into the wire during crimping. Ans. 4. Thus, the "recesses are performing the same function of biting into the wire." Ans. 4. Accordingly, the Examiner determines Ono does not teach away from the proposed modification. Ans. 4-5. Moreover, the Examiner explains Ono's purpose is not frustrated by the proposed modification. Ans. 3. As discussed above, the Examiner notes the recesses of Sawada are concave ( as are the recesses of Ono) and perform the same function of biting into the wire during the crimping process. Ans. 3. Additionally, the Examiner finds Ono's desire to increase the total length of edges biting into the wire is not frustrated by modifying the shape of the recesses, but rather is achieved by increasing the number of recesses in the crimping area. Ans. 3 ( citing Ono ,i 61 ). 10 Appeal2017-008574 Application 14/003,604 Regarding Appellants' arguments that there is no suggestion in the art to include an overlap of recesses when viewed from either the lengthwise or widthwise direction, the Examiner explains that Sawada teaches a lengthwise pitch between adjacent recesses such that the edges of the recesses overlap when viewed along a widthwise direction. Ans. 6. The Examiner further explains an ordinarily skilled artisan would understand Ono also teaches the lengthwise pitch between recesses may be modified. Ans. 6; see also Ono ,i 50 ( describing a range for the lengthwise pitch), Fig. 4 (P2). Also, the Examiner finds one of ordinary skill in the art "would understand that Sawada teaches that the circular recesses of Sawada present a profile which allows this overlap [ ( of recesses when viewed from a widthwise direction)] to occur while still maintaining a workable distance between the recesses." Ans. 6. To illustrate this finding, the Examiner has annotated Figure 4 of Ono to reflect the proposed modification. Ans. 7-8. The Examiner's annotated version of Ono's Figure 4 is reproduced below: fl"]· '. 11 Appeal2017-008574 Application 14/003,604 The Examiner's annotated version of Figure 4 from Ono shows a modified grid of four recesses consistent with the proposed modification of Ono's recesses combined with Sawada's recesses. The Examiner notes Ono teaches the "workable distance" between adjacent recesses in a lengthwise direction is 0.1 mm and is identified in Figure 4 as L3.4 Ans. 6. As shown in the Examiner's annotated figure, if the quadrangular recesses of Ono are replaced with the cylindrical recesses of Sawada and the lengthwise pitch (P2) is reduced (as taught by Sawada) "a pattern where the circular recesses overlap along both a widthwise and lengthwise direction can be accomplished, as seen in the upper left portion of the [ annotated figure]." Ans. 6. Further, the Examiner includes a diagonal line labeled D 1, "which has a length of half of the illustrated dimension L3" between the annotated (i.e., cylindrical) recesses. Ans. 7-8. The Examiner finds the annotated recesses are separated by a distance greater than the length of D 1 and, therefore, comply with Ono's "excessive closeness" proscription. Ans. 8. Replying to the Examiner's responses, Appellants assert Ono defines the "excessive closeness" to be avoided (as identified by the Examiner) as no less than 0.1 mm in a lengthwise direction. Reply Br. 4. That is, Appellants assert Ono describes that recesses in the lengthwise direction must be separated by at least 0.1 mm and cannot, therefore, overlap. Reply Br. 4. Moreover, Appellants assert the Examiner's annotated drawing shows a line Dl extending in a diagonal direction, which does not comport with 4 Ono does describe the distance between recesses in the lengthwise direction is set to be 0.1 mm or more. Ono ,-J 70. However, in the example embodiment illustrated in Figure 4 of Ono, L3 is set at 0.2 mm. Ono ,-J 51. 12 Appeal2017-008574 Application 14/003,604 Ono's teaching of maintaining a distance of 0.1 mm between adjacent recesses in the lengthwise (i.e., extending) direction. Reply Br. 7-8. We do not find Appellants' arguments necessarily persuasive of Examiner error. First, we find Ono does not teach away from the Examiner's proposed combination with the teachings of Sawada. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). "[T]he 'mere disclosure of more than one alternative' does not amount to teaching away from one of the alternatives where the reference does not 'criticize, discredit, or otherwise discourage the solution claimed."' SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1320 (Fed. Cir. 2015) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Although Ono's exemplary embodiments are limited to recesses that are quadrangular in shape (see, e.g., Ono ,-J,-J 11, 15, 45-46, 58, 62, 78-80, Figs. 2-4), Ono does not "criticize, discredit, or otherwise discourage" the use of other shaped recesses. See SightSound, 809 F.3d at 1320. In addition, we disagree with Appellants (see App. Br. 9-10) that Ono teaches away from increasing the density of recesses (i.e., that it "is not preferable" to decrease the distance between recesses). Rather, Ono teaches that an increase in the total length of the edges formed by the recesses increases the total area of conductor wire into which the edges "bite," thereby increasing the holding force of the wire barrel on the wire, and decreasing the electrical resistance of the connection. Ono ,-J,-J 10, 61-62, 74. 13 Appeal2017-008574 Application 14/003,604 Additionally, regarding Appellants' assertion that Ono teaches it "is not preferable" to decrease the distance between the recesses, we agree with the Examiner that, in context, Ono is not discouraging increasing the density of recesses in the crimping portion of the terminal, but instead sets a minimum distance between recesses so as to avoid "an excessive load [ from being] applied to the die in press working of a metal plate material for forming the terminal connector with the die." Ono ,i 69. As discussed further infra, this distance relates to a distance "between the recesses." Ono iJ 69. Thus, Ono does not teach away from the Examiner's proposed modification of increasing the density of recesses in the crimping portion of the terminal or from modifying the shape of the recesses from quadrangular to cylindrical. Second, we disagree with Appellants that the Examiner's proposed modification of Ono's quadrangular recesses with the cylindrical recesses taught by Sawada frustrates the purpose of Ono. We agree with the Examiner's explanation that the recesses of Sawada and those of Ono perform the same function of biting into the conductor wire during crimping. See Ans. 3. Further, by also increasing the density of recesses (in addition to changing the shape to cylindrical), the total length of edges may be increased, which is consistent with the teaching of Ono. Ans. 3-4; see also Ono ,i 61. Third, we disagree with Appellants (see App. Br. 12-13) that an ordinarily skilled artisan would not be motivated to combine Ono and Sawada to produce a pattern of recesses in a crimping terminal that overlap when viewed from both a lengthwise and widthwise direction. The 14 Appeal2017-008574 Application 14/003,604 Examiner has set forth an articulated reasoning with rationale underpinning for the proposed combination (i.e., to "utilize[] more area of the crimping section for crimping connection to the wire through the recesses, ensuring a consistent crimping connection."). Final Act. 4; see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (holding the relevant inquiry in an obviousness analysis is whether the Examiner has set forth "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.") Further, an obviousness analysis "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." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). "A person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR, 550 U.S. at 421. As discussed during oral arguments, regarding the number of choices for the recesses to overlap, counsel for Appellants indicated there are "only two choices. They overlap in one direction or both."5 Tr. 6:3-4. Counsel argued that one of ordinary skill in the art "would not have expected or known to do [ ( overlap the recesses)] both directions at once" because Ono describes a need to avoid placing the recesses too close together. Tr. 6: 17- 7: l 3. Although, we agree that Ono describes a minimum spacing between recesses (see Ono ,i 70), we disagree that this precludes an arrangement 5 Because the Examiner has not relied upon the obviousness rationale of "obvious to try" (i.e., choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success), we do not opine herein on this rationale. 15 Appeal2017-008574 Application 14/003,604 wherein the modified recesses (i.e., cylindrical) may be seen to overlap from both the lengthwise and widthwise directions. Contrary to Appellants' assertion, we do not find Ono is limited to requiring a minimum spacing of 0.1 mm strictly in the lengthwise direction ( designated as L3 in Figure 4 of Ono) in all instances. Rather, Ono describes the minimum spacing in the lengthwise direction (L3) is required for "the present embodiment," in which, inter alia, the recesses are quadrangular in shape. Ono ,i 70. As discussed above, the minimum spacing between recesses of 0.1 mm, as required by Ono, is to avoid excessive load from being applied to the die in press working. Ono ,i 70. Thus, we find one of ordinary skill in the art would understand Ono to teach a minimum spacing of 0.1 mm between recesses in any direction. From this perspective, we do not find fault with the Examiner's approach to use diagonal measurement (D 1) as an indication of the closest distance between adjacent recesses, and to ensure that the proposed modification maintains Ono's minimum spacing requirement of 0.1 mm. However, the Examiner has not provided sufficient explanation or technical reasoning that D 1 ( as indicated in the Examiner's annotated version of Ono's Figure 4) is 0.1 mm or greater. Although patent drawings are not drawn to scale, relationships clearly shown in the drawings of a reference patent cannot be disregarded in determining the patentability of claims. See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). However, patent drawings not designated as being drawn to scale cannot be relied upon to define precise proportions of elements if the specification is completely silent on the issue. Hockerson- Halberstadt, Inc. v. Avia Group Int'!, 222 F.3d 951, 956 (Fed. Cir. 2000). 16 Appeal2017-008574 Application 14/003,604 Here, Ono is silent as to Figure 4 being drawn to scale. 6 Accordingly, it is improper for the Examiner to rely on the measurement of L3 from Figure 4 and determine the measurement of D 1-a distance between recesses on a drawing modified by the Examiner-comports with a minimum distance specified by Ono. Additionally, we note that in the Examiner's modified version of Figure 4, the Examiner only modifies pitch distance P2. Ans. 6. Applying the set values of P 1 (0.5 mm, see Ono ,-J 48) and L2 (0.1 mm, see Ono ,-J 49), we determine the distance indicated by the Examiner as D 1 would not meet the required minimum separation distance between recesses of Ono. Although the Examiner's proposed combination of Ono and Sawada may still teach or reasonably suggest ( e.g., by increasing pitch distance (P 1) and reducing pitch distance (P2)) the claimed limitations of recesses that overlap when viewed from the lengthwise and widthwise directions and still maintain a workable distance between recesses (i.e., such as 0.1 mm as in Ono), the Examiner has not sufficiently described such a configuration and explained how such a modification might remain consistent with the articulated reasoning to combine the teachings of Ono and Sawada (i.e., to "utilize[] more area of the crimping section for crimping connection to the wire through the recesses, ensuring a consistent crimping connection," Final Act. 4). 6 We note the distances represented by L2 and L3 appear similar in Figure 4 of Ono, but Ono discloses the values (for purposes of the embodiment in Figure 4) of L2 at 0.1 mm and L3 at 0.2 mm (i.e., twice as big as L2). Ono ,-i,-i 4 9, 5 2. 17 Appeal2017-008574 Application 14/003,604 For the reasons discussed supra, constrained by the record before us, we do not sustain the Examiner's rejection of independent claim 1.7 For similar reasons, we do not sustain the Examiner's rejection of claims 2-5, which depend directly or indirectly therefrom. DECISION We reverse the Examiner's decision rejecting claims 1-5 under pre- AIA 35 U.S.C. § 103(a). REVERSED 7 Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure ("MPEP") § 1213.02 (9th ed., Rev. 08.2017, Jan. 2018). 18 Copy with citationCopy as parenthetical citation