Ex Parte Chen et al

Board of Patent Appeals and Interferences

Aug 30, 2007

10233318 (B.P.A.I. Aug. 30, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YIH-FANG CHEN,
ROBERT C. LAM, FENG DONG, and
BULENT CHAVDAR
____________

Appeal 2006-3159
Application 10/233,318
Technology Center 1700
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Decided: August 30, 2007
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
THOMAS A. WALTZ, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 2, 4, 5, and 7-31. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
Appeal 2006-3159
Application 10/233,318

We AFFIRM.
INTRODUCTION
Appellants claim a friction material comprising, in relevant part, a
fibrous base material and second layer wherein the second layer has a lower
permeability in the radial direction and a lower permeability in the normal
direction than the first base layer (claim 1; Specification 19:2-10).
Claim 1 is illustrative:
1. A friction material comprising a first layer comprising a
fibrous base material, and a second layer comprising at least one type
of friction modifying particle on a top surface of the fibrous base
material, the second layer having an average thickness of about 30-
200 μm, wherein the second layer has a permeability lower than the
first layer,

wherein the friction modifying particles have an average
diameter size from about 0.1 to about 80 microns,

wherein the fibrous base material has an average voids
volume from about 50% to about 85%, and

wherein the second layer has a lower permeability in the
radial direction and a lower permeability in the normal direction than
the first layer.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Lam I US 5,856,244 Jan. 5, 1999
Seitz US 6,524,681 B1 Feb. 25, 2003
Lam II1 US 6,630,416 B1 Oct. 7, 2003

1 Roman numerals have been added to differentiate between Lam US
5,856,244 (i.e., Lam I) and Lam US 6,630,416 B1 (i.e., Lam II).
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Appeal 2006-3159
Application 10/233,318

The rejections as presented by the Examiner are as follows:

1. Claims 1, 2, 4, 5, and 7-31 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lam I in view of Seitz.
2. Claims 1, 2, 4, 5, and 7-31 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lam II in view of Seitz.

With regard to each of the rejections, Appellants argue claim 1 only.
Accordingly, claims 2, 4, 5, and 7-31, which directly or ultimately depend
from claim 1, stand or fall with claim 1.
OPINION
35 U.S.C. § 103(a) REJECTIONS: LAM I IN VIEW OF SEITZ & LAM II
IN VIEW OF SEITZ

Appellants argue that none of the references disclose a friction
material wherein “the second layer has a lower permeability in the radial
direction and a lower permeability in the normal direction than the first
layer” as required by claim 1 (Br. 6 and 7). Appellants argue that the
Examiner has not established that Seitz’s friction coating has the claimed
normal and radial permeabilities (Br. 6 and 8). Appellants contend that the
Examiner has relied on hindsight to determine that Seitz’s friction coating
inherently has the claimed lower radial and normal permeabilities (Br. 6;
Reply Br. 5).
We have considered all of Appellants’ arguments and are unpersuaded
for the reasons below.
Appellants have not provided any arguments regarding the
Examiner’s findings that Lam I and Lam II disclose the second layer average
thickness being about 30-200 μm, the friction particles having an average
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Appeal 2006-3159
Application 10/233,318

diameter size form about 0.1 to 80 microns, or the fibrous base material has
an average voids volume from 50% to about 85%. Rather, all of Appellants’
arguments are directed to whether the Examiner has established that the
normal and radial permeabilities claim feature is disclosed by Seitz.
Accordingly, Appellants only contest whether the normal and radial
permeabilities claim feature is disclosed by Seitz.
Generally, where the claimed products are identical or substantially
identical, the USPTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of the
claimed product. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977).
Appellants disclose in the Specification that lower permeability in the
radial and normal directions results in “the top friction modifying particle
layer hold[ing] the fluid or lubricant at the surface of the friction material.”
(Specification 19:8-10).
Seitz discloses that the fibrous backing material (i.e., fibrous base
material) is porous to allow for the friction coating (i.e., second layer) to
impregnate the fibrous backing material (i.e., fibrous base material) (Seitz,
col. 13, ll. 54-67; col. 14, ll. 1-17). Seitz further discloses that the friction
coating (i.e., second layer) and fibrous backing material (i.e., fibrous base
material) retain the lubricating fluid at the interface of the friction surface
(i.e., atop the friction coating) and the contact surface (Seitz, col. 2, ll. 37-39,
col. 5, ll. 41-50).
From Appellants’ and Seitz’s disclosures, there is a reasonable basis
in fact that Seitz’s friction coating (i.e., second layer) has “a lower
permeability in the radial direction and a lower permeability in the normal
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Appeal 2006-3159
Application 10/233,318

direction than the first layer [i.e., fibrous backing material]” as required by
claim 1. Specifically, as the Examiner determined, because Seitz’s friction
coating (i.e., second layer) retains fluid at the interface of the friction surface
and the contact surface (i.e, atop the friction coating), the friction coating
(i.e., second layer) must be less permeable than the fibrous backing layer
(i.e., fibrous base material) in the normal and radial directions (Answer 6-8).
Moreover, Seitz’s express disclosure that the backing layer is “porous” to
permit the friction coating to impregnate the fibrous backing, necessarily
requires that the fibrous backing layer be more permeable than the friction
coating (i.e., second layer) in the normal and radial directions.
Accordingly, because the Examiner established a reasonable basis for
believing that Seitz’s friction coating possesses the particular normal and
radial permeabilities claim feature, the burden shifted to Appellants to prove
that Seitz does not possess the argued claim feature. Best, 562 F.2d at 1255,
195 USPQ at 433-34. Appellants have proffered no evidence that the argued
claim feature is not possessed by Seitz. Therefore, Appellants have not
satisfied their burden.
Therefore, we affirm the following rejections: (1) the § 103(a)
rejection of claims 1, 2, 4, 5, and 7-31 over Lam I in view of Seitz, and (2)
the § 103(a) rejection of claims 1, 2, 4, 5, and 7-31 over Lam II in view of
Seitz.
DECISION
The Examiner’s decision is affirmed.
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Appeal 2006-3159
Application 10/233,318

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

tf/ls

EMCH, SCHAFFER, SCHAUB & PORCELLO, CO., L.PA.
P.O. BOX 916
TOLEDO, OH 43697-0916
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