Ex Parte Dong et al

Patent Trial and Appeal Board

Nov 28, 2016

13205339 (P.T.A.B. Nov. 28, 2016)

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.
13/205,339 08/08/2011 Feng Dong DKT11073 (0309.4162.901 1693
67424 7590
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
11/29/2016 EXAMINER
CHRISS, JENNIFER A
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
11/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FENG DONG, ROBERT C. LAM, and
TIMOTHY P. NEWCOMB1
Appeal 2015-006510
Application 13/205,339
Technology Center 1700
Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
DEBRA L. DENNETT, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections under 35 U.S.C. § 103(a) of claims 1—16 and 19-21 as
unpatentable over Lam (US 2004/0033341 Al, pub. Feb. 19, 2004) in view
of EFTec (EFTec Nanofibrillated Fibers, Engineered Fibers Technology,
LLC (2007), www.eftfibers.com) and of claims 17 and 18 as unpatentable
over these references in combination with Cordenka (DE 202006000062 Ul,
1 Borg Warner, Inc. is identified as the real party in interest. App. Br. 4.
Appeal 2015-006510
Application 13/205,339
pub. May 16, 2007, as translated). We have jurisdiction under 35 U.S.C.
§6.
We REVERSE.
Appellants claim a wet friction material comprising fibrillated
nanofibers that define a nanofibrous web and friction adjusting particles held
by the nanofibrous web (independent claims 1 and 12).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A wet friction material comprising:
a friction interfacing surface for experiencing frictional
engagement with an opposed surface in the presence of a
lubricant, at least a portion of the friction interfacing surface
comprising fibrillated nanofibers that define a nanofibrous web
and friction adjusting particles held by the nanofibrous web.
In rejecting the independent claims, the Examiner finds that Lam
discloses a wet friction material comprising fibrillated aramid fibers or
cellulose fibers defining a fibrous web that holds friction adjusting particles
(Final Action 2—3) but that “Lam fails to teach the use of nanofibers” {id. at
3). The Examiner concludes that it would have been obvious “to have made
the fibrillated fibers of Lam with the diameter of the nano-fibrillated
cellulose of EFTec motivated by the desire to have made the fibrillated
[fibers of Lam] with a specific diameter that improves performance as set
forth in the [EFTec] product disclosure” {id. at 3 4).
We agree with Appellants that the Examiner erred in finding Lam
discloses fibrillated cellulose fibers {see, e.g., App. Br. 24, cf. Ans. 6—7).
For the reasons detailed by Appellants {see, e.g., Reply Br. 11—12 (citing
Lam || 12—15, 17, 18, 49, 53, 55, 56, 59, and 60)), a preponderance of
2
Appeal 2015-006510
Application 13/205,339
evidence supports a determination that Lam discloses only aramid fibers as
being fibrillated. Therefore, contrary to the Examiner’s belief, Lam’s
noncategorical reference in paragraph 52 to fibrillated fibers would be
interpreted by one with ordinary skill in this art as a reference to fibrillated
aramid fibers.
We also agree with Appellants that the Examiner’s obviousness
conclusion is not supported by articulated reasoning with rational
underpinning (see, e.g., App. Br. 23). See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”) quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). In defense of the above quoted obviousness
conclusion, the Examiner urges that “making the fibers of Lam nanometric
in scale [would have been obvious because]. . . fibers of such a scale exist
and would be useful in Lam” (Ans. 8). However, the Examiner fails to
provide any reasoning with rational underpinning as to why nano scale fibers
“would be useful in Lam” (id.).2
For this reason, the record contains no proper support for the
Examiner’s conclusion that it would have been obvious “to have made the
2 Such reasoning is essential because EFTec contains no disclosure
regarding friction material of the type taught by Lam and because the
Examiner cites no evidence in support of (1) the conjecture that “[t]he fibers
of Lam’s fibrous web are likely to be nanometric” (Ans. 6) and (2) the
unembellished statement that “[t]he nanofibrous webs shown in the EFTec
reference show pores on scale with those required by Lam” (id.).
3
Appeal 2015-006510
Application 13/205,339
fibrillated fibers of Lam with the diameter of the nano-fibrillated cellulose of
EFTec” (Final Action 3 4).3 We do not sustain, therefore, the Examiner’s
§103 rejections of claims 1—21.
The decision of the Examiner is reversed.
REVERSED
3 In the Response to Argument section of the Answer, the Examiner presents
an alternative theory of obviousness by stating “one of ordinary skill in the
art would simply use the EFTec nanofibers to make the Lam fabric because
they are fibrillated and share the same composition as those [of] Lam” (Ans.
8). We will not consider this alternative theory because it is tantamount to
an unauthorized new ground of rejection.
4