Yoshinori Ishikawa

Patent Trials and Appeals Board

Mar 5, 2020

15078615 - (D) (P.T.A.B. Mar. 5, 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.
15/078,615 03/23/2016 Yoshinori Ishikawa 6006-0219 9215
39083 7590 03/05/2020
KENEALY VAIDYA LLP
3000 K Street, N.W.
Suite 200
Washington, DC 20007
EXAMINER
CRUM, JACOB R
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
03/05/2020 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):
avaidya@kviplaw.com
uspto@kviplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSHINORI ISHIKAWA
____________

Appeal 2019-000063
Application 15/078,615
Technology Center 2800
____________

Before KAREN M. HASTINGS, DONNA M. PRAISS, and
JANE E. INGLESE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–6. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.

1 Our Decision refers to the Specification (“Spec.”) filed Mar. 23, 2016, the
Final Office Action dated Oct. 24, 2017 (“Final Act.”), Appellant’s Appeal
Brief (“Appeal Br.”) filed Apr. 24, 2018, the Examiner’s Answer (“Ans.”)
dated Aug. 9, 2018, and Appellant’s Reply Brief (“Reply Br.”) filed Sept.
27, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Yazaki Corporation as the real party
in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The subject matter on appeal “relates to a fuse unit for connecting a
battery, and particularly to the fuse unit mounted on a battery box.”
Spec. ¶ 1. Appellant’s Figure 3 below is a sectional view of fuse unit 1.
Id. ¶ 21.

Figure 3 above illustrates fuse element 10 integrally formed by press
molding a metal plate and rotation regulating part 30 for stopping rotation of
a screw terminal fitting 40. Id. ¶ 25. Rotation regulating part 30 includes
terminal abutting part 31 and cover part 32 for covering a back surface of
terminal abutting part 31. Id. ¶ 35. According to the Specification, terminal
abutting part 31 is formed by folding one edge of external connection plate
part 12 at a right angle. Id. ¶ 36. Claim 1, reproduced below from the
Claims Appendix to the Appeal Brief, is illustrative (disputed limitations
italicized).
1. A fuse unit for connecting a battery, comprising:
a fuse element being integrally formed of a metal plate,
and having a battery connection plate part to be connected to
the battery, an external connection plate part for fastening a
screw terminal fitting connected to an external circuit, and a
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fusible part which makes conductive connection between the
battery connection plate part and the external connection plate
part and is fused when a rated or more current flows,
a resin-made fuse housing that supports the fuse element,
and
a rotation regulating part that stops rotation of the screw
terminal fitting fastened to the external connection plate part,
wherein the rotation regulating part includes a terminal
abutting part and a cover part, the terminal abutting part is one
edge of the external connection plate part that is bent and folded
relative to a remainder of the external connection plate part, the
terminal abutting part includes an abutting surface, a back
surface and an end surf ace, the abutting surface faces and
abuts one side edge of the screw terminal fitting when the screw
terminal fitting is secured to the external connection plate part
such that the terminal abutting part stops the rotation of the
screw terminal fitting, the back surface is on a side of the
terminal abutting part that is opposite to the abutting surface,
the end surf ace extends from the abutting surface to the back
surface, and the cover part is a resin-made integral portion of
the fuse housing and covers the back surface of the terminal
abutting part, and
the cover part extends beyond the end surface of the
terminal abutting part such that a height of the cover part is at
least higher than a height of the terminal abutting part.

Claim 5, the only other independent claim on appeal, similarly
requires a terminal abutting part and a cover part.

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
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identify the alleged error in the examiner’s rejections.”)). After considering
the positions of both the Examiner and Appellant, we are persuaded the
Examiner reversibly erred for the reasons set forth in Appellant’s briefs and
discussed below.
The Examiner rejects claims 1–6 under 35 U.S.C. § 103 as being
unpatentable over Matsumura3 in view of Stack.4 Final Act. 2–11.
The Examiner finds Matsumura discloses a fuse unit comprising a
fuse element, a resin-made fuse housing, a rotation regulating part, and a
resin-made cover part, but Matsumura does not disclose a terminal abutting
part being one edge of an external connection plate part that is bent and
folded relative to a remainder of the external connection plate part, and also
including an abutting surface and a back surface on a side of the terminal
abutting part opposite the abutting surface, to prevent relative movement
between the external connection plate and the screw terminal fitting. Id. at
3–4. The Examiner finds that Stack suggests such a rotation regulating part
including a terminal abutting part to stop the rotation of a screw terminal
fitting. Id. at 4 (citing Stack Figs. 1–3, ¶ 29). The Examiner determines that
it would have been obvious to combine the external connection plate part of
Matsumura with a terminal abutting part as in Stack and forming the cover
part of Matsumura on the terminal abutting part in order to prevent
movement between the external connection plate part and the screw terminal
fitting, and because the rearrangement of parts involves only routine skill in
the art. Id. at 4–5.

3 US 6,512,443 B1, issued Jan. 28, 2003.
4 US 2004/0018417 A1, published Jan. 29, 2004.
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Appellant contends the Examiner’s reasoning does not support a legal
conclusion of obviousness because Matsumura’s positioning rib 21a is
formed only of resin and Stack’s anti-rotation stop 124 is formed only of
copper. Appeal Br. 12. Appellant argues that neither reference discloses a
rotation regulation part that is a composite of resin and metal, thus, the
resultant combination would have been formed from only one material, resin
or copper. Id. Alternatively, Appellant asserts that a composite structure
that includes Matsumura’s positioning rib and Stack’s anti-rotation stop
would not have disclosed or suggested the extent to which the various
surfaces should or could extend relative to one another. Id. Appellant
argues that “the cover part extends beyond the end surface of the terminal
abutting part such that a height of the cover part is at least higher than a
height of the terminal abutting part” as recited in claim 1 is not a
consequence of the Examiner’s proposed combination. Id. at 12–13.
Appellant challenges the combination of Matsumura with Stack on the
basis that Matsumura’s first positioning rib successfully prevents movement
of the first terminal relative to each of resin body 3A and first terminal
connection plate 8 without the need for Stack’s anti-rotation stop 124. Id. at
15–16.
The Examiner responds that Matsumura discloses the fuse housing
and cover part is formed on/around the fuse element and external connection
plate part by resin molding. Ans. 4 (citing Matsumura 3:30–35, Figs. 1–5).
The Examiner reasons that modifying Matsumura with a terminal abutting
part suggested by Stack would similarly form the cover part on/over the top
and sides of the terminal abutting part of the external connection plate part
such that it covers the back surface and end surface as required by the claim.
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Id. The Examiner further responds that the claims do not require that the
abutting surface directly abut one side edge of the screw terminal fitting,
thus, the existence of an intermediate portion of the cover part between the
abutting surface and the side edge of the screw terminal fitting would still
meet the claim limitation. Id. at 5.
Regarding the combination of Matsumura and Stack, the Examiner
finds that preventing relative movement between the external connection
plate part and the screw terminal fitting and preventing relative movement
between the fuse housing/cover part and the screw terminal fitting provides a
motivation to combine. Ans. 5. The Examiner also responds that modifying
Stack’s metal abutting part would reduce the amount of resin required to
form the resin rotation regulating part/cover part of Matsumura since the
metal terminal abutting part will occupy some of the volume. Id. at 6. The
Examiner finds that metal is generally stronger than resin/plastic and thus
Stack’s metal structure would reinforce the resin structure of Matsumura to
provide a stronger rotation regulating part. Id.
Appellant contends that the Examiner’s assertion that the claims do
not require the abutting surface to directly abut one side edge of the screw
terminal fitting is inconsistent with the plain meaning of the verb “to abut.”
Reply Br. 4. Appellant argues “to abut” explicitly precludes a third structure
located between abutting structures. Id. at 5. Appellant supports the
argument with a dictionary definition “to touch along a border or with a
projecting part; to terminate at a point of contact.” Id. (citing Meriam-
Webster Dictionary, 2018). Appellant also argues if the motivation to
combine Matsumura with Stack is to reduce resin, then the Examiner fails to
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provide a rationale for covering any portion of Stack’s anti-rotation stop 124
with resin. Id. at 7.
Appellant’s arguments are persuasive of harmful error.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellant persuasively
argues that the claim term “abut” should be given its plain meaning “to
touch along a border or with a projecting part; to terminate at a point of
contact.” Reply Br. 5. Appellant’s position is consistent with the usage of
the term in the Specification. See e.g. Spec. Fig. 3 (showing terminal
abutting part 31 terminates at and touches along a border of side edges 41).
Under this construction of the term, claim 1, therefore, precludes a third
material to intervene between surfaces that abut one another as argued by
Appellant (Reply Br. 4–5). Thus, the Examiner’s finding (Ans. 4) that
modifying Matsumura with Stack would form a cover part on/over the top
and sides of the terminal abutting part of the external connection plate part
means that the terminal abutting part would not abut one side edge of the
screw terminal fitting as required by claim 1.
We are also persuaded by Appellant that the Examiner’s rationale for
modifying Matsumura with Stark is flawed. Based on the record cited in
this Appeal record, the Examiner’s modification of Matsumura appears to be
based on improper hindsight rather than an apparent reason to combine
known elements in the fashion claimed. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 419, 418 (2007). As Appellant points out (Appeal Br. 16),
Matsumura’s first positioning rib already prevents movement without the
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need for Stack’s anti-rotation stop. Appellant also persuasively argues
(Reply Br. 7, 9) that if Stack’s anti-rotation stop is made of a superior
material for strength and there is a desire for reducing the amount of resin as
the Examiner states, then one skilled in the art would have been motivated to
replace Matsumura’s resin with Stack’s metal rather than form a composite
or encase Stack’s stop with resin.
In view of the above and for the reasons provided in the Appeal Brief
and the Reply Brief, we reverse the Examiner’s rejection of claim 1 as well
as claims 2–4, which depend from claim 1.
Because independent claim 5 similarly requires a terminal abutting
part that is one edge of an external connection plate part that is bent and
folded and includes an abutting surface, a back surface, and an end surface
where a resin-made cover part cover the back surface and the end surface,
we do not sustain the Examiner’s rejection of independent claim 5 for the
same reasons discussed above in connection with claim 1. We also reverse
the rejection of claim 6, which depends from claim 5.

CONCLUSION
For these reasons and those the Appellant provides, we reverse the
Examiner’s rejection of claims 1–6 under 35 U.S.C. § 103.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ References/Basis Affirmed Reversed
1–6 103 Matsumura, Stack 1–6
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REVERSED