Ex Parte Ogasawara et alDownload PDFPatent Trial and Appeal BoardDec 30, 201612858473 (P.T.A.B. Dec. 30, 2016) Copy Citation 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. 12/858,473 08/18/2010 Shigeyuki OGASAWARA Q120314 5948 65565 7590 SUGHRUE-265550 2100 PENNSYLVANIA AVE. NW WASHINGTON, DC 20037-3213 EXAMINER CRUM, JACOB R ART UNIT PAPER NUMBER 2835 NOTIFICATION DATE DELIVERY MODE 01/04/2017 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): SUGHRUE265550@SUGHRUE.COM PPROCESSING@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 SHIGEYUKI OGASAWARA and KEIZO AOKI Appeal 2015-001885 Application 12/858,473 Technology Center 2800 Before: JEFFREY S. SMITH, JOHN R. KENNY, and SCOTT E. BAIN, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from rejections of claims 1—6, which constitute all pending claims. Final Act. 1. An oral hearing (“Hearing”) was held on December 13, 2016. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2015-001885 Application 12/858,473 CLAIMED INVENTION The Specification relates to a power-supply unit that is used in hybrid automobiles, electric automobiles or the like. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A wire arrangement body, comprising: a wire arrangement groove portion of a groove shape that receives one or more wires; a lid portion that is rotatably connected to the wire arrangement groove portion about a first hinge and covers the wire arrangement groove portion so as to seal a groove opening of the wire arrangement groove portion, the lid portion including a first portion, a second portion, and a gap between the first portion and the second portion; and a wire drawing piece that faces the gap and is rotatably connected about a second hinge to an end portion of the first portion of the lid portion, wherein at least one wire is taken out from the wire arrangement groove portion through the gap and supported along the wire drawing piece, and wherein the wire arrangement body is provided so that a rotation axis of the second hinge crosses at a right angle to a rotation axis of the first hinge. REFERENCE Saito US 6,290,552 B1 Sep. 18,2001 REJECTIONS Claims 1, 4, 5, and 6 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Applicant's Admitted Prior Art (“Admitted Art”). Final Act. 2. 2 Appeal 2015-001885 Application 12/858,473 Claims 2 and 3 stand rejected under 35 U.S.C. 103(a) as being unpatentable over the combination of the Admitted Art and Saito. Final Act. 5. ANALYSIS The Examiner finds that the difference between claim 1 and Admitted Art is that the Admitted Art does not disclose the claim limitation of “wherein the wire arrangement body is provided so that a rotation axis of the second hinge crosses at a right angle to a rotation axis of the first hinge.” Final Act. 3. The Examiner maps the first and second hinges recited in claim 1 to hinges 191 and 192, respectively, in the Admitted Art. Id. at 2—3. As shown in Figure 7 of the Specification, the rotation axes of hinges 191 and 192 in the Admitted Art are parallel. App. Br. 4, citing Spec. Fig. 7. The Examiner concludes, however, that it would have been an obvious design choice to rotate hinge 192 ninety degrees so the rotation axes of hinges 191 and 192 would cross at right angles. Final Act. 3^4; Ans. 4—5. Appellants argue that a design choice rationale cannot support an obviousness rejection in this case because the Admitted Art is not functionally equivalent to the claimed invention. App. Br. 7—8; Reply 5—6. The Examiner does not dispute the lack of functional equivalence, and in fact, agrees the Admitted Prior Art is “clearly not functionally equivalent to the claimed invention.” Ans. 5, emphasis omitted. We agree with Appellants that this lack of functional equivalence, without another justification, precludes an obvious design choice rationale. See In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995); App. Br. 7-8; Reply Br. 5-6. The Examiner suggests that functional difference between the claimed invention and the Admitted Art might not exist for the full breadth of the 3 Appeal 2015-001885 Application 12/858,473 claim 1, but does not provide any example of how it does not. Ans. 6. Appellants represent this functional difference exists for the breadth of the claim. December 13, 2016 Hearing Transcript, 9:21—13:2. On the record before us, we have no reason to conclude otherwise. The functional advantage of the claimed invention—preventing the rotation of one hinge from forcing the other hinge to rotate (and inadvertently popping a lid) appears to result from providing the rotation axis of the second hinge at a right angle to a rotation axis of the first hinge, which is recited by claim 1. App. Br. 4-13. Accordingly, we do not sustain the rejection of claim 1 nor the rejections of claims 2—6, which depend from claim 1. DECISION We reverse the rejections of claims 1—6. REVERSED 4 Copy with citationCopy as parenthetical citation