Yoshinori IshikawaDownload PDFPatent Trials and Appeals BoardMar 5, 202015078615 - (D) (P.T.A.B. Mar. 5, 2020) 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. 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. Appeal 2019-000063 Application 15/078,615 2 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 Appeal 2019-000063 Application 15/078,615 3 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 Appeal 2019-000063 Application 15/078,615 4 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. Appeal 2019-000063 Application 15/078,615 5 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. Appeal 2019-000063 Application 15/078,615 6 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 Appeal 2019-000063 Application 15/078,615 7 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 Appeal 2019-000063 Application 15/078,615 8 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 Appeal 2019-000063 Application 15/078,615 9 REVERSED Copy with citationCopy as parenthetical citation