YAZAKI CORPORATION

Patent Trials and Appeals Board

Feb 27, 2020

14810527 - (D) (P.T.A.B. Feb. 27, 2020)

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.
14/810,527 07/28/2015 Tomoyasu MURAKAMI MIY.001.0718.NP 4260
65181 7590 02/27/2020
METROLEX IP LAW GROUP, PLLC
900 17th Street, NW.
Suite 320
WASHINGTON, DC 20006
EXAMINER
TSO, STANLEY
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
02/27/2020 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):
info@metrolexip.com
team-o@metrolexip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMOYASU MURAKAMI
Appeal 2018-006303
Application 14/810,527
Technology Center 2800
Before BRADLEY W. BAUMEISTER, LINZY T. McCARTNEY,
JASON M. REPKO, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
final rejection of claims 1, 2, 4, 5, 8–13, and 15–19. We have jurisdiction
under 35 U.S.C. § 6(b). We heard oral argument on February 12, 2020.
We reverse.

1 Appellant identifies the real party in interest as YAZAKI
CORPORATION. Appeal Brief 3, filed February 27, 2018 (Appeal Br.).
Appeal 2018-006303
Application 14/810,527

2
BACKGROUND
This patent application concerns a grommet. See Specification 1, filed
July 28, 2015 (Spec.). Claim 1 illustrates the claimed subject matter:
1. A grommet comprising:
a body portion configured to divide an inside and an
outside of a mounting member;
an electric wire insertion portion extending from the body
portion toward the outside of the mounting member and
configured to insert an electric wire;
a seal portion provided at an outermost position of an end
of the electric wire insertion portion to be in close contact with
an outer circumference of the electric wire,
wherein the seal portion comprises a projected rim formed
continuously on the outer circumferential surface of the electric
wire insertion portion to ensure pressured contact between the
inner circumferential surface of the seal portion and the outer
circumferential surface of the electric wire; and
a protective portion disposed on the end of the electric
wire insertion portion at the outermost position of the electric
wire insertion portion where the seal portion is provided and
configured to extend from the end of the electric wire insertion
portion at the outermost position of the electric wire insertion
portion away from the body portion along a length direction of
the electric wire insertion portion and to cover an outer
circumference of the electric wire exposed from the seal portion,
wherein
the protective portion has the outside diameter on an
opposite side of a seal portion side set smaller than the outside
diameter on the seal portion side,
the protective portion has a wall thickness that continually
decreases from the seal portion side to the opposite side of the
seal portion side, and
the electric wire insertion portion has a constant wall
thickness that is greater than the wall thickness of the protective
Appeal 2018-006303
Application 14/810,527

3
portion anywhere from the seal portion side to the opposite side
of the seal portion side.
Appeal Br. 19.
REJECTIONS
Claims 35 U.S.C. § Reference(s)/Basis
1, 2, 5, 8–13, 15 § 103 Kumakura,2 Schadow3
4, 16–19 § 103 Kumakura, Schadow, Oga4
5 § 103 Kumakura, Schadow, Moorhead5
DISCUSSION
The Examiner determined that it would have been obvious to replace
part of Kumakura’s tubular portion 8 with only the tapered portion of
Schadow’s body unit 10a to arrive at the grommet recited in claim 1. See
Final Action 3–5, mailed September 8, 2017 (Final Act.); Examiner’s
Answer 6–9, mailed April 2, 2018 (Ans.). Appellant argues that the
Examiner failed to provide sufficient motivation for this modification. See
Appeal Br. 17; Reply Brief 15, filed June 1, 2018.
We agree with Appellant. The Examiner determined that a person of
ordinary skill in the art would have been motivated to replace part of
Kumakura’s tubular portion 8 with just the tapered portion of Schadow’s
body unit 10a “in order to dampen cable vibrations as suggested by
Schadow.” Ans. 9; see also Final Act. 5. But Schadow’s device uses
damping elements to dampen cable vibrations and these elements are not
included within the tapered portion of Schadow’s body unit 10a. See

2 Kumakura et al. (US 7,434,814 B2; October 14, 2008).
3 Schadow et al. (US 8,586,879 B2; November 19, 2013).
4 Oga et al. (US 7,399,922 B2; July 15, 2008).
5 Moorhead (US 2,800,526; July 23, 1957).
Appeal 2018-006303
Application 14/810,527

4
Schadow 2:23–34, 4:29–46, Fig. 1 (showing damping and sealing elements
14a, 15a to the left of electric device housing unit 12a and the tapered
portion of body unit 10a to the right). As a result, replacing part of
Kumakura’s tubular portion 8 with only the tapered portion of Schadow’s
body unit 10a as proposed by the Examiner would not “dampen cable
vibrations as suggested by Schadow.” We therefore agree with Appellant
that the Examiner has not provided sufficient motivation to for the
Examiner’s proposed combination of Kumakura and Schadow.
On this record, we do not sustain the Examiner’s obviousness
rejection of claim 1. Because claims 2, 4, 5, 8–13, and 15–19 depend from
claim 1, we also do not sustain the Examiner’s obviousness rejections of
these claims.
CONCLUSION
This table summarizes our decision for claims 1, 2, 4, 5, 8–13, and
15–19, the claims before us on appeal:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5, 8–
13, 15 § 103 Kumakura, Schadow
1, 2, 5, 8–
13, 15
4, 16–19 § 103 Kumakura, Schadow, Oga 4, 16–19
5 § 103 Kumakura, Schadow, Moorhead 5
Overall
Outcome
1, 2, 4, 5,
8–13, 15–
19

REVERSED