Ex Parte Takayashiki

Patent Trial and Appeal Board

Sep 2, 2016

14026396 (P.T.A.B. Sep. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/026,396 09/13/2013
115727 7590 09/07/2016
Banner & Witcoff, LTD.
& attorneys for client no 007936
1100 13th Street NW
Suite 1200
Washington, DC 20005
FIRST NAMED INVENTOR
Y ousuke Takayashiki
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.
007936.00019 4110
EXAMINER
STONER, KILEY SHAWN
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
09/07/2016 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):
PT0-115727@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUSUKE T AKA Y ASHIKI
Appeal2015-004198
Application 14/026,396
Technology Center 1700
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
DEBRA L. DENNETT, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-004198
Application 14/026,396
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision2
finally rejecting claims 1---6. App. Br. 4. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
The invention relates to an ultrasonic jointing method that prevents
decreases in jointing strength and inhibits the occurrence of burrs. Specification
filed September 13, 2013 ("Spec."), 2: 18-20. In an ultrasonic jointing method, a
conductor part of an electric wire and a terminal are joined by holding these parts
between a horn and an anvil and applying ultrasonic vibration. Id. at 1: 16-20.
According to the Specification, problems that occur in known prior art ultrasonic
jointing methods include decreased jointing strength due to reduced cross-sectional
area of the conductor part in the jointing region of the conductor part and the
terminal (id. at 1 :21-24 ), and the formation of burrs that occur in gaps between the
horn and sidewalls of the terminal (id. at 7:14--16). The inventors are said to have
discovered an improved ultrasonic jointing method that substantially eliminates
formation of burrs and achieves jointing strengths of more than 60 MP a. Id. at
8:5-7, 9:6-8. According to the method the concave part of the horn in which the
conductor is received is sized so that the cross-sectional area S of the concave part
is .89 to 1.46 times as large as the cross-sectional area A of the conductor part. Id.
at 9:4---6, 19-24.
Claim 1, the sole independent claim on appeal, reads as follows (emphasis
added):
1. An ultrasonic jointing method for performing an
ultrasonic joint of a conductor part which is exposed by removing a
1 Appellant identifies the real party in interest as Yazaki Corporation of Tokyo,
Japan. Appeal Brief filed October 17, 2014 ("App. Br."), 2.
2 Final Office Action mailed June 3, 2014 ("Final Act.").
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Application 14/026,396
coating of an electric wire with respect to a terminal, the ultrasonic
jointing method comprising:
holding the conductor part of the electric wire and the terminal
between an anvil and a horn in which a concave part is formed; and
applying an ultrasonic vibration to the conductor part of the
electric wire and the terminal that are held between the anvil and the
horn,
wherein the conductor part is received in the concave part
which has a space area of 0.89 to 1.46 times as large as a cross-
sectional area of the conductor part of the electric wire.
The claims stand rejected as follows:
1. Claims 1-5 are rejected under 35 U.S.C. § 102(b) as anticipated by or,
in the alternative, under 35 U.S.C. § 103(a) as unpatentable over both (a) Fujimoto
et al. (U.S. Patent Application Publication No. 2004/0088857 Al, published May
13, 2004 ("Fujimoto")) and (b) Goto (Japanese Patent Application No. 2000-
202642A, published July 25, 2000 (English Abstract)).
2. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
both (a) Fujimoto in view of Stroh et al. (U.S. Patent Application Publication No.
2010/0170935 Al, published July 8, 2010 ("Stroh")) and (b) Goto in view of
Stroh.
Appellant relies on arguments in support of patentability based on
limitations recited in independent claim 1 for all claims on appeal. See App. Br.
16. Specifically, Appellant raises the following issue on appeal: did the Examiner
reversibly err in finding each of Fujimoto and Goto teaches or suggests an
ultrasonic jointing method wherein a conductor part of the electric wire is held in a
concave part of a horn, the concave part having "a space area of 0.89 to 1.46 times
as large as a cross-sectional area of the conductor part of the electric wire," as
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Appeal2015-004198
Application 14/026,396
recited in independent claim 1? We answer this question in the atlirmative for the
reasons discussed below.
Rejections under 35 U.S.C. § 102(b)
The Examiner finds Fujimoto's Figure 7 illustrates concave part 109a in
horn 109 as having substantially the same cross-sectional area as that of conductor
part lOla of electric wire 101, i.e., a ratio of 1:1. Final Act. 3. The Examiner
similarly finds Goto Figures 4 and 7 illustrate concave parts 3a, 13a as having
substantially the same cross-sectional area as that of conductor parts 5a, 15a, i.e., a
ratio of 1: 1. Id. at 6. The Examiner finds a ratio of 1: 1 falls within the claim 1
recitation of a concave part having "a space area of 0.89 to 1.46 times as large as a
cross-sectional area of the conductor part." Id. at 3, 6.
Appellant disputes the Examiner's findings that Fujimoto Figure 7 and Goto
Figures 4 and 7 illustrate the cross-sectional areas of a concave part of a horn and a
conductor as having a ratio of 1: 1 or any other particular spacial relationship within
the range recited in appealed claim 1. See App. Br. 5-12. Appellant further argues
neither the description in Fujimoto's specification nor Goto's abstract indicates a
relationship between the cross-sectional areas of these parts. Id. at 6-7, 11-12.
The Examiner, in the Response to Argument section of the Answer,
concedes the figures of Fujimoto and Goto "are not necessarily drawn to scale,"
but argues "the features they suggest, such as, the relationship between cavity size
and conductor size can be properly applied as a teaching." Examiner's Answer
mailed December 23, 2014 ("Ans."), 4--5, 8. The Examiner contends "an artisan
armed with Figure 7 of Fujimoto" or "Figures 4A and 7A-7B of Goto"
would have immediately recognized that the cavity ... would have
necessarily required a concave part with a space area that is
approximately the same area/size (in the range of 0.89 to 1.46 times as
large) as a cross-sectional area of the conductor part of the wire in
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Appeal2015-004198
Application 14/026,396
order to form a strong and reliable ultrasonic bond. The artisan
certainly knows that if the wire is not controlled by a horn having a
cavity of the proper size and vibrated at the desired frequency, a
strong, reliable, and repeatable bond will fail to be formed.
Id. at 5, 8-9.
As pointed out by Appellant (App. Br. 7, 12), the relevant case law does not
support the Examiner's reliance on the figures of Fujimoto and Goto for a teaching
of a specific numerical relationship between the cross-sectional areas of the horn's
concave part and the conductor part of the wire. See In re Wright, 569 F.2d 1124,
1127 (CCP A 1977) ("Absent any written description in the specification of
quantitative values, arguments based on measurement of a drawing are of little
value"); cf Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed. Cir. 2005) ("The
district court erred in not properly applying the principles set forth in our prior
precedents that arguments based on drawings not explicitly made to scale in issued
patents are unavailing."). The Examiner, moreover, has not identified persuasive
evidentiary support for the above-noted findings with respect to the understanding
of the ordinary artisan. See Ans. 5, 8-9 supra.
Accordingly, we find the Examiner's anticipation rejections are not
supported by a preponderance of the evidence, and we do not sustain the rejection
of claims 1-5 under 35 U.S.C. § 102(b) as anticipated by Fujimoto or the rejection
of claims 1-5 under 35 U.S.C. § 102(b) as anticipated by Goto.
Rejections under 35 U.S.C. § 103(a)
With respect to each of Fujimoto and Goto, the Examiner asserts that if
Appellant
can prove that the conductor part and concave part ... do not fulfill
the claimed range of 0.89 to 1.46 times, then ... it would have been
obvious to one of ordinary skill in the art to utilize a horn having a
concave part that has substantially the same cross-sectional area as
that of the conductor part (wire) in order to securely hold the
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Application 14/026,396
conductor part (wire) during ultrasonic bonding and uniformly bond
the lower surface of the conductor part (wire) to the upper surface of
the terminal.
Final Act. 3--4, 6.
Appellant argues the Examiner has not identified support for the stated
motivation to modify Fujimoto or Goto to use a concave part and a conductor part
having the claimed cross-sectional relationship. See App. Br. 13; Reply Brief filed
February 19, 2015 ("Reply Br."), 4. We agree with Appellant that, on the record
before us, the Examiner appears to rely solely on improper hindsight reasoning in
support of the obviousness determinations. See also Ans. 17-18 (failing to identify
support for the stated motivation to use a concave part that has substantially the
same cross-sectional area as that of the conductor part). As further noted by
Appellant, neither Fujimoto nor Goto discloses any dimensions or dimensional
relationships for their concave and conductor parts, and the Examiner has not
identified persuasive evidence to support a finding that the ordinary artisan would
have recognized the cross-sectional relationship between the concave and
conductor parts as a variable that would achieve a recognized result (see Ans. 11
(citing In re Aller, 220 F.2d 454, 456 (CCPA 1955))). Reply Br. 4. In other
words, the facts and reasons relied on by the Examiner do not support a finding
that the ordinary artisan would have achieved the range recited in claim 1 by virtue
of optimizing dimensions of the concave and conductor parts for purposes of
holding the wire securely during the step of applying an ultrasonic vibration. See
Ans. 10-11.
Accordingly, we do not sustain the rejection of claims 1-5 under 35 U.S.C.
§ 103(a) as unpatentable over Fujimoto, the rejection of claims 1-5 under
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35 U.S.C. § 103(a) as unpatentable over Goto, or the rejections of claims 6 under
35 U.S.C. § 103(a) as unpatentable over (a) Fujimoto and Stroh and (b) Goto and
Stroh.
REVERSED
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