Ex Parte Lamport

Board of Patent Appeals and Interferences

Oct 31, 2006

10375748 (B.P.A.I. Oct. 31, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT A. LAMPORT
____________

Appeal 2006-2137
Application 10/375,748
Technology Center 1700
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Decided: October 31, 2006
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Before PAK, TIMM, and GAUDETTE, Administrative Patent Judges.
PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner's final rejection of claims 24
through 47, which are all of the claims pending in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 134.

I. APPEALED SUBJECT MATTER
The subject matter on appeal is directed to a method of forming a
molded friction material “suitable for use in the brake mechanisms of
Appeal 2006-2137
Application 10/375,748

automobiles, aircraft, railroad vehicles, industrial machines, etc….” See the
Specification at 1. The method involves, inter alia, introducing a slurry
composition having particular organic and inorganic ingredients into a die
cavity and extracting the water from the slurry composition by pressing the
slurry composition in the die cavity with a particular die punch. See the
Specification at 3. According to the Appellant (Specification at 3-4):
By mixing the ingredients as a water slurry, the limitations of
particle size and fiber length are effectively eliminated, as is the
need for a high content of organic processing aids and liquid
resins. The wet slurry mixing process has the ability to disperse
long fibers and flakes and to suspend large particles without
segregation.

Details of the appealed subject matter are recited in claims 24 and 38
which are reproduced below:
24. A method of forming a molded friction material,
comprising:

placing a slurry composition in a die cavity, the slurry
composition comprising water and 10-50% by weight solids,
the solids comprising 2-15 vol.% organic fibers of 2-15 mm
length, 2-20 vol.% organic pulp of up to 8 mm length, 2-10
vol.% inorganic fibers of 2-15 mm length, 2-15 vol.% metallic
fibers of 2-15 mm length, 2-10 vol.% inorganic flake materials
of ½-10 mm in the largest dimension, 5-20 vol.% carbonaceous
particles of ½-10 mm in the largest dimension, and resin binder;

extracting the water from the slurry by pressing on the
slurry in the die cavity with a die punch sized to form a gap
between the punch and a sidewall of the die cavity whereby
the water is extracted through the gap, followed by drying,
resulting in the formation of a friction material preform; and

molding the friction material preform by applying heat
and pressure thereto.
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38. The method of claim 24 wherein placing the slurry
composition in a die cavity includes the die cavity having a top-
facing opening with the sidewall being vertically-oriented, and
wherein pressing on the slurry is by pressing the die punch
downward on a top surface of the slurry composition to force
the solids toward a bottom of the die cavity while extracting the
water upward through the gap between the vertically-oriented
sidewall and the punch and out of the top-facing opening of the
die cavity.

II. PRIOR ART
As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
MacMurray US 2,697,979 Dec. 28, 1954
Tabe US 4,324,706 Apr. 13, 1982
Parker US 4,656,203 Apr. 7, 1987

III. REJECTION
Claims 24 through 47 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Parker, Tabe and
MacMurray.

IV. FINDINGS AND CONCLUSIONS
We have carefully considered the claims, specification and prior art
references, including the arguments advanced by both the Appellant and the
Examiner in support of their respective positions. This review has led us to
conclude that the Examiner’s § 103 rejection is well founded. Accordingly,
we will sustain the Examiner’s decision rejecting claims 24 through 47
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under § 103 for the factual findings and conclusions set forth by the
Examiner in the Answer and below.
Under 35 U.S.C. § 103, the obviousness of an invention cannot be
established by combining the teachings of the prior art references absent
some teaching, suggestion or incentive supporting the combination. ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929,
933 (Fed. Cir. 1984). This does not mean that the cited prior art references
must specifically suggest making the combination. B.F. Goodrich Co. v.
Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318
(Fed. Cir. 1996); In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502
(Fed. Cir. 1988). Rather, the test for obviousness is what the combined
teachings of the prior art references would have suggested to those of
ordinary skill in the art. In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In evaluating the prior art references for a suggestion, it is
proper to take into account not only the specific teachings of the references,
but also the inferences which one skilled in the art would reasonably be
expected to draw therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ
342, 344 (CCPA 1968).
Applying the above obviousness test to the present circumstance, we
determine that the prior art references as a whole would have suggested the
claimed subject matter within the meaning of 35 U.S.C. § 103. As correctly
found by the Examiner (Answer 3-4):
Parker teaches a method of manufacturing low density
friction products such as clutch facings, disk brake pads, brake
linings, brake blocks and the like including mixing together a
binder, reinforcing fibers, fillers, friction modifiers and water to
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Application 10/375,748

form a slurry of about 12% by weight solids (10-50% by weight
solids); dispensing the slurry into an annular mold (placing a
slurry composition in a die cavity); applying pressure to the
slurry in the mold to dewater the slurry, via a top and bottom
filter medium which forms pad [sic. part] of the mold, to about
30-40% by weight water content thereby forming a preform
(extracting the water from the slurry by pressing on the slurry in
the die cavity with a die punch); drying the preform in 150
degrees F to 1% by weight water level (followed by drying,
resulting in the formation of a friction material preform); and
pressing the dried preform between two hot mold plates in a hot
press with sufficient pressure and for a sufficient length of time
to form a final friction product having a desired density and the
other desired properties … (column 1 , lines 10-26; column 2,
lines 16-20; column 4, lines 7-32; Example 2 in column 5).

As acknowledged by the Examiner (Answer 3-7) and argued by the
Appellant (Br. 3-7), Parker does not mention the claimed diameter of friction
and wear modifiers and fillers, the claimed proportions of solid materials,
and the claimed die punch design. However, we concur with the Examiner
that these features are necessarily present in Parker and/or suggested by the
prior art references as a whole.
As to claimed diameter of friction and wear modifiers and filler, the
Appellant does not challenge the Examiner’s finding at page 4 of the
Answer that Parker teaches conventional “friction and wear modifiers and
fillers, such as graphite (carbonaceous particles) and vermiculite (inorganic
flake materials)” which are useful for forming friction products. See also
Parker, column 3, lines 23-30 and column 2, lines 3-9. These conventional
friction and wear modifiers and fillers, as correctly found by the Examiner at
page 5 of the Answer, necessarily have “a particle size of 50 mesh or smaller
(1/2-10 mm in the largest dimension)” as explained by Tabe. See also Tabe,
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column 9, lines 48-58 and col. 2, ll. 9-23. Compare Telemac Cellular Corp.
v. Topp Telecom, Inc., 247 F.3d 1316, 1328, 58 USPQ2d 1545, 1553 (Fed.
Cir. 2001)(“[R]ecourse to extrinsic evidence is proper to determine whether
a feature, while not explicitly discussed, is necessarily present in a
reference.”) with In re Baxter Travenol Labs, 952 F.2d 388, 390, 21
USPQ2d 1281, 1284 (Fed. Cir. 1991)(“Extrinsic evidence may be
considered when it is used to explain…the meaning of a reference.”). The
Appellant does not contest that the claimed dimensions of carbonaceous
particles and inorganic flake materials include the dimensions of the
conventional friction and wear modifiers and fillers.
As to the claimed proportions of solid materials, there is no dispute
that Parker teaches the claimed organic, inorganic and metallic fibers and
pulp having the claimed lengths, the claimed resin binder and the claimed
friction and wear modifiers and filers having the claimed dimensions.
Compare Answer 4-6 with Br. 3-10 and Reply Br. 1-5. Nor is there any
dispute that Parker teaches forming a slurry containing the above solid
materials using the claimed solids to water ratio for purposes of making
friction products. Compare Answer 4 with Br. 3-10 and Reply Br. 1-5.
Although, as recognized by the Examiner, Parker does not specifically
mention the claimed proportions of the above-mentioned solid materials, the
Examiner correctly finds that Parker teaches that such proportions are result
effective variables. See the Answer 4-5. Specifically, the Examiner finds
that Parker teaches that the selection of appropriate proportions of the above-
mentioned solid materials is dependent on desired manufacturing
characteristics or properties. See the Answer 4-5, together with Parker,
column 2, lines 60-66 and column 3, lines 8-12. Thus, we concur with the
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Examiner that the determination of optimum proportions of the above-
mentioned solid materials, such as those claimed, in the friction product
forming process of the type discussed in Parker is well within the ambit of
one of ordinary skill in the art. In re Boesch, 617 F.2d 272, 276, 205 USPQ
215, 219 (CCPA 1980)(“[D]iscovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill of the
art.”).
The Appellant asserts (Br. 4) that:
It is the Appellant[']s position that optimization of the result-
effective variable was limited in the processes of Parker… as a
result of the dewatering processes used in their methods. One
skilled in the art could not simply change the quantities and
sizes of the various components to arrive at the present
invention due to the limitation in the dewatering step.
[Emphasis original.]

We are not persuaded by this assertion. First, the Appellant does not
refer to any objective evidence to support his assertion that the dewatering
step taught by Parker would direct one of ordinary skill in the art away from
the claimed proportions. In re De Blauwe, 736 F.2d 699, 705, 222 USPQ
191, 196 (Fed. Cir. 1984). Second, as indicated supra, Parker not only
specifically and inherently teaches the claimed sizes of solid fibers and
particles, but also teaches that the amounts of solid fibers and particles
employed can be varied to obtain friction products having desired
manufacturing characteristics and properties.
As to the claimed punch design, there is no dispute that MacMurray
teaches the claimed punch design which is used to dewater and compact a
slurry in a die cavity. Compare Answer 6, 10 and 11 with Br. 3-10 and
Reply Br. 1-5. Specifically, MacMurray teaches that its invention is directed
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to “a press for separating liquids from slurries and sludges and compacting
the solid materials…” See column 1, lines 15-17. This press is said to
include a solid cylindrical anvil ram having a plurality of small liquid-
conducting passages corresponding to the claimed die punch design. See
column 4, lines 20-63. We find that MacMurray further teaches (col. 2, ll.
14-21) that:
It is an object of my invention to provide a press for
simultaneously dewatering and compacting aqueous slurries
and sludges and the like without exposing the solids to air.
Another object is to provide a press of such character that can
be operated rapidly in a substantially continuous manner. A
further object is to provide a press that is relatively simple and
strong in construction and simple in operation.

Thus, we concur with the Examiner that one of ordinary skill in the art
would have been led to employ the press having the claimed punch design
taught by MacMurray to carry out the dewatering and compacting step
taught by Parker, motivated by a reasonable expectation of successfully
obtaining the advantages stated above. Parker clearly teaches employing a
press to remove water from its slurry.
The Appellant appears to argue that MacMurray is not analogous prior
art, thus implying that it is improperly combined with Parker and Tabe.
Reply Br. 1-2. We do not agree. Although as argued by the Appellant at
pages 1 and 2 of the Reply Brief, MacMurray is particularly interested in
“dewatering of sludges and slurries composed essentially of a mixture of
finely-divided lead and about 3% or more by weight of water…,”1 it clearly
indicates that its press is directed to separating liquids from any slurries and

1 MacMurray does not exclude slurries having the amount of water taught by
Parker.
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sludges as indicated, supra. As the Appellant’s invention and Parker are
directed to dewatering a slurry with a press, we find that MacMurray is at
least “reasonably relevant to the particular problem with which the inventor
was involved.” In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060
(Fed. Cir. 1992) (“Two criteria have evolved for determining whether prior
art is analogous: (1) whether the art is from the same field of endeavor,
regardless of the problems addressed, and (2) if the reference is not within
the field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.”).
As to separately argued claim 38, we find nothing in MacMurray
which indicates criticality of operating its press in a horizontal manner.
Rather, as can be seen from column 4, lines 12-16, of Parker, pressing a
slurry appears to be accomplished in a vertical orientation to retain 30 to 40
% by weight water content. Thus, notwithstanding the Appellant’s
arguments to the contrary, we concur with the Examiner that it would have
been obvious to one of ordinary skill in the art to operate the press taught by
MacMurray in a vertical manner in the dewatering (pressing) step of Parker
to retain the desired water content in a slurry.
Based on the totality of record, including due consideration of the
Appellant’s arguments, we determine that the preponderance of evidence
weighs most heavily in favor of obviousness within the meaning of
35 U.S.C. § 103. Accordingly, we affirm the Examiner’s decision rejecting
the claims on appeal under 35 U.S.C. § 103.

V. CONCLUSION
The decision of the Examiner is affirmed.
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VI. TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

cam

Delphi Technologies, Inc.
M/C 480-410-202
P.O. Box 5052
Troy, MI 48007

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