Ex Parte Lam

Board of Patent Appeals and Interferences

May 11, 2010

10678720 (B.P.A.I. May. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT C. LAM
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Appeal 2010-000522
Application 10/678,720
Technology Center 1700
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Decided: May 11, 2010
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and
PETER F. KRATZ, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 6-9, 12, 13, and 29.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6. Claim 6 is
illustrative:
6. A friction material comprising a fibrous base material impregnated
with at least one curable resin, the fibrous base material comprising a porous
primary layer and one secondary layer, the secondary layer comprising
partially carbonized carbon fibers on at least one surface of the primary
layer, the partially carbonized carbon fibers comprising 3% to about 90% of
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the surface area of the primary layer, wherein the secondary layer comprises
about 5% to about 35%, by weight, of partially carbonized carbon fibers,
based on the weight of the fibrous base material, wherein the partially
carbonized carbon fibers are 65 to 90% carbonized, and wherein the porous
primary layer comprises a plurality of less fibrillated aramid fibers having a
freeness of at least about 300 on the Canadian Standard Freeness (CSF)
index, and optionally one or more of the following: cotton fibers, carbon
fibers, carbon particles, and, at least one filler material.

The Examiner relies upon the following references as evidence of
obviousness:
Smith 5,965,658 Oct. 12, 1999
Lam (EP '151) EP 0971151 Jan. 12, 2000
Lam (EP '897) EP 1 203 897 A1 Aug. 5, 2002

Appellant's claimed invention is directed to a friction material
comprising a fibrous base which is impregnated with a curable resin. The
fibrous base comprises a porous primary layer and a secondary layer. The
primary layer comprises aramid fibers having the recited freeness and the
secondary layer comprises partially carbonized carbon fibers. The primary
layer may also contain carbon fibers.
Appealed claims 6-9, 12, 13, and 29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over EP '897 in view of EP '151 and Smith.
Appellant has not set forth an argument that is reasonably specific to
any particular claim on appeal. Accordingly, all the appealed claims stand
or fall together with claim 6.
We have thoroughly reviewed each of Appellant's arguments for
patentability. However, we are in complete agreement with the Examiner's
reasoned analysis and application of the prior art, as well as her cogent and
though disposition of the arguments raised by Appellant. Accordingly, we
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will adopt the Examiner's reasoning as our own in sustaining the rejection of
record, and we add the following for emphasis only.
There is no dispute that EP '897, like Appellant, discloses a friction
material comprising a fibrous base material that is impregnated with a
curable resin wherein the fibrous base material comprises a porous primary
layer and a secondary layer. Nor is there any dispute that the primary layer
of EP '897 comprises less fibrillated aramid fibers and carbon fibers. As
recognized by the Examiner, the secondary layer of EP '897 comprises
carbon particles and aramid fibers but the reference does not teach that the
secondary layer also comprises partially carbonized carbon fibers. However,
Appellant does not contest the Examiner's finding that EP '151 teaches a
friction material comprising a primary layer and a secondary layer wherein
the secondary layer comprises high temperature resistant, high strength
carbon fibers and aramid fibers, as well as a primary layer that comprises
carbon fibers. Accordingly, based on the combined teachings of EP '897 and
EP '151, we fully concur with the Examiner that it would have been obvious
for one of ordinary skill in the art to include carbon fibers in the secondary
layer of EP '897.
EP '897 and EP '151 do not teach that the carbon fibers are partially
carbonized carbon fibers, as presently claimed. However, Smith teaches that
carbon fibers and aramid fibers are preferred over asbestos in friction
materials, and that carbonized carbon fibers are superior to carbon fibers in
friction materials. As a result, we find no error in the Examiner's legal
conclusion that it would have been obvious for one of ordinary skill in the
art to use partially carbonized carbon fibers for the carbon fibers in the
primary and secondary layers of EP '897 and EP '151. Appellant has made
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no argument for why it would have been unobvious for one of ordinary skill
in the art to use partially carbonized carbon fibers in the primary and
secondary layers of EP '897 and EP '151.
We find no merit in Appellant's argument in that "given the infinite
array of elements with which to start, one would not follow the exact route
of the inventor" (App. Br. 7, 3rd ¶). Appellant has not explained why adding
carbon fibers to the secondary layer of EP '897, and partially carbonizing
such carbon fibers for the advantages taught by Smith, encompasses an
infinite array of possible elements. As set forth by the Examiner, EP '897,
EP '151, and Smith "are all in the same field of endeavor directed to
producing a material for use as a brake which has the properties of creating
friction while dissipating heat and maintaining strength and structural form
in a high friction condition (Ans. 7, last ¶). Appellant's arguments, for the
most part, constitute an ineffective attack of each of the references,
individually, but fail to set forth a convincing rationale for why it would
have been nonobvious for one of ordinary skill in the art to modify the
friction material of EP '897 as proposed by the Examiner.
Appellant's Reply Brief contains arguments that could have been
presented in the principal Brief, but were not. Accordingly, Appellant's new
arguments are untimely and will not be considered in our disposition of this
appeal. See Optivus Tech., Inc. v. Ion Beam Applications, S.A., 469 F.3d
978, 989 (Fed. Cir. 2006) (Argument raised for the first time in the Reply
Brief that could have been raised in the opening Brief is waived); see also,
Cross Med. Prods., Inc., v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293,
1320-21 n.3 (Fed. Cir. 2005). See also 37 C.F.R. § 41.37(c)(1)(vii) (2007).
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We do note, however, that Appellant cites paragraphs [0040], [0045]-[0050],
[0053], [0055], [0056], and [0057] of EP’151 in support of the argument that
the reference teaches that the secondary layer does not comprise carbon
fibers if the primary layer comprises carbon fibers. However, Appellant
fails to cite paragraph [0042] of the reference which expressly discloses that
primary and secondary layers may comprise carbon fibers. We also find no
merit in Appellant's argument that paragraphs [0040] and [0044] of EP '151
disclose that carbon fibers are only useful in the secondary layer. The cited
paragraphs provide no such teaching but only offer examples of fibers that
may be present in the primary and secondary layers.
As a final point, we note that Appellant bases no argument upon
objective evidence of nonobviousness, such as unexpected results.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner's decision rejecting the appealed claims is
affirmed.
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

cam

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