Ex Parte Samoto

Board of Patent Appeals and Interferences

Apr 8, 2010

10669687 (B.P.A.I. Apr. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KENJI SAMOTO
____________________

Appeal 2009-011819
Application 10/669,687
Technology Center 2100
____________________

Decided: April 8, 2010
____________________

Before LEE E. BARRETT, HOWARD B. BLANKENSHIP, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-011819
Application 10/669,687

2
Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-6, 19 and 20.1 Claims 9-15 have been withdrawn,
claims 16-18 have been cancelled. (App. Br. 9). We have jurisdiction under
35 U.S.C. § 6(b) (2008) and an oral hearing was held March 24, 2010.
We REVERSE.
Introduction
According to Appellant, the invention is a system and method for “a
flexible cable harness with a plurality of flexible cables that transmit
electrical signals from a main body to a carriage in an image forming
apparatus, such as a printer” (Spec. [0001]).

STATEMENT OF THE CASE
Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A flexible cable harness, comprising:
a plurality of flexible cables, each having a first end
connected to a first object and a second end connected to a
second object, at least one of the plurality of flexible cables
contributing to an electrical connection between the first object
and the second object,
each of the plurality of flexible cables comprising:
a curved portion that curves between the first end and the
second end;
a first positioning system added near the first end in the
curved portion; and

1 Appellant states the rejection of claims 7 and 8 is not being presented for
review although the Examiner had rejected these claims in the Final
Rejection (App. Br. 9). Therefore, the Board does not have jurisdiction as to
the non-appealed claims 7 and 8. We suggest the Examiner cancel claims 7
and 8 upon return of this case to the Examiner.
Appeal 2009-011819
Application 10/669,687

3
a second positioning system added near the second end in
the curved portion, wherein a distance from the first positioning
system to the second positioning system is different in each of
the plurality of flexible cables such that more inward flexible
cables located at the curved portion are shorter in distance
between the first positioning system and the second positioning
system, the first positioning system of each of the plurality of
flexible cables is fixed to a first positioning part provided on or
near the first object, the second positioning system of each of
the plurality of flexible cables is fixed to a second positioning
part provided on or near the second object, and each of the
plurality of flexible cables are spaced in the curved portion.

Prior Art
Serizawa 6,257,898 B1 Jul. 10, 2001
Urushibata JP 06021949 Mar. 22, 1994

Rejections
Claims 1-6, 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Urushibata.

ISSUE
35 U.S.C. § 103(a): claims 1-6, 19 and 20
Appellant asserts their invention is not obvious over Urushibata
because the reference does not disclose all the claim limitations (App. Br.
12). Specifically, Appellant contends Urushibata fails to teach adding
structure to each of their flexible cables as recited in the claims (id. at 12-
14). Appellant further argues that Urushibata’s disclosure of cables 13-17
does not teach the first and second positioning systems of claims 1 and 19 on
appeal because Urushibata does not disclose flexible cables and an
additional first and second positioning systems (id. at 14-16). Finally,
Appeal 2009-011819
Application 10/669,687

4
Appellant argues that the Examiner does not provide adequate support as to
why Urushibata “discloses or suggest the first and second positioning system
of claims 1 and 19” (id. at 16). Specifically, Appellant argues that the
Examiner does not indicate where Urushibata discloses “any structure or
positioning system that is ‘on’ the cables” (id.).
The Examiner finds that Appellant admits that Urushibata discloses
flexible cables and that the Appellant’s argument that first and second
positioning systems are added to the cables is “not germane to the issue of
patentability of the device itself” (Ans. 3). The Examiner further finds that
the first and second positioning systems are unnumbered on cables 29 and
21 and 23, respectively and that these teach the limitations set forth in the
claimed invention (id. at 2-3).

Issue: Has Appellant shown the Examiner erred in finding Urushibata
discloses first and second positioning systems that are added to the structure
of flexible cables?

FINDINGS OF FACT (FF)
We find as follows:
Appellant’s Invention
(1) Appellant discloses a first positioning system added near the
first end and a second positioning system added near the second end as
shown in Fig. 2A of Appellant’s Specification.
Figure 2A of Appellants’ Specification is reproduced below.

Appeal 2009-011819
Application 10/669,687

5

Figure 2A discloses a first positioning system added near the first end
and a second positioning system added near the second end.

Urushibata Reference
(2) Urushibata relates to a head cable for a printing device that
connects a print head mounted with a printing device carriage to a main print
circuit board (pg. 4, [0001]).
(3) Figure 1 of Urushibata teaches a structure of a head cable for a
printing device. The head cable 13 is comprised of a outer flat cable 15 and
inner flat cable 17 (pg. 5, [0003]). The head cable 13 and a print head 5 are
connected using connectors 21 and 23 which include insertion ports 21a and
23a formed thereon (id.). The end portions of the outer flat cable and inner
flat cable 17 are inserted therein (id.).
Figure 1 of Urushibata is shown below.
Appeal 2009-011819
Application 10/669,687

6

Figure 1 of Urushibata shows a structure of a head cable for a printing
device

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
We find the Examiner has not provided us with enough evidence to
sustain the rejection. The Examiner has relied on Urushibata and pointed
Appeal 2009-011819
Application 10/669,687

7
out the endpoints of the cables to show first and second positioning systems,
as shown below, without any further explanation as to what parts constitute
the first and the second positioning systems.
An Examiner’s mark up of Figure 1 of Urushibata is shown below.

The Examiner’s mark up of Figure 1 of Urushibata shows Figure 1
with added ellipses, arrows, and text reading “second positioning system”
and “first positioning system. However, neither the Figure nor the
description in Urushibata provides us with any indication of what the
unnumbered structure would be. Indeed, although there appear to be
positioning systems (connectors 21 and 23, for example), the Examiner has
not provided us with an explanation as to what the indicated portion of the
Urushibata Figure 1 represent, what the modification to Urushibata would
Appeal 2009-011819
Application 10/669,687

8
be, or how such a modification would be made so as to teach Appellant’s
claimed invention. Thus, making this determination would require
speculation on our part and we decline to engage in speculation.
Accordingly, we find the Examiner has not shown Urushibata teaches “a
first positioning system added near the first end in the curved portion; and a
second positioning system added near the second end in the curved portion”
as recited in independent claims 1 and 19.

CONCLUSION
The Examiner has not shown claims 1 and 19 are obvious over
Urushibata. Since claims 2-6 depend from representative and independent
claim 1 and claim 20 depends from independent claim 19, claims 2-6 and 20
have not been shown to be obvious over Urushibata. Accordingly,
Appellant has shown the Examiner erred in rejecting claims 1-6, 19 and 20
under 35 U.S.C. § 103(a) for obviousness over Urushibata.

DECISION
The Examiner’s rejection of claims 1-6, 19 and 20 under 35 U.S.C.
§ 103(a) as being obvious over Urushibata is rejected.

REVERSED

Vsh

OLIFF & BERRIDGE, PLC
P.O. BOX 320850
ALEXANDRIA VA 22320-4850