Ex Parte Domagalski et al

Board of Patent Appeals and Interferences

Sep 15, 2010

11247545 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER DOMAGALSKI, ALFRED HAUSLER,
INGRID KRATSCHMER, ANDREAS KIENZLE, and
DIETER WUSTNER
____________

Appeal 2010-000933
Application 11/247,545
Technology Center 1700
____________

Before CHUNG K. PAK, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-000933
Application 11/247,545

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 15 and 16.2 We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Claim 15 is illustrative of the invention and is reproduced below
(emphasis added):
15. A fiber-reinforced composite material, consisting of:

a porous body infiltrated with at least one carbide-
forming element having a matrix of carbon;

fiber agglomerates having a fiber agglomerate average
length, measured in a fiber direction, of from 3 mm to 50 mm,
and a fiber agglomerate average thickness, measured
perpendicularly to said fiber direction, of from 0.1 mm to 10
mm; and

at least 75% of all fibers contained in the agglomerates
having a length between at least 90% and at most 110% of said
fiber agglomerate average length.

The Examiner rejected claims 15 and 16 under 35 U.S.C. § 103(a) as
unpatentable over the combined prior art of Koba3 and Sommer.4
MAIN ISSUE ON APPEAL
Did the Examiner err in determining that the combined teachings of
the applied prior art would have rendered the fiber reinforced composite of
claim 15 obvious within the meaning of § 103?

2 Claims 5-14 and 17-21 have been withdrawn; claims 1-4 are canceled (Br.
2).
3 US 5,532,034, issued July 2, 1996.
4 US 2004/0126535 A1, issued July 1, 2004.
Appeal 2010-000933
Application 11/247,545

3
We decide this issue in the negative.
ANALYSIS
With Factual Findings
We rely on and adopt the Examiner’s factual findings and reasoning
(Final Office Action 3-7; Ans. 3-5), as well as the Examiner’s findings of
fact and reasoning in response to the Appeal Brief5 as set out on pages 5-8 of
the Answer in the “Response to Argument” section, as our own. We add the
following primarily for emphasis.
Appellants’ main argument against the Examiner’s rejection is that
Koba does not show the fiber length distribution required in claim 15 (Br. 4-
8). We agree with the Examiner, however, that Koba’s process would have
resulted in all the fibers in the agglomerates being substantially the same
length, and the limitation in question encompasses all the fibers being the
same length (e.g., Ans. 7). Appellants have not addressed the Examiner’s
reasoning and conclusion on this point as no responsive brief has been filed.
Appellants also argue that “no one of ordinary skill in the art would
look to” Sommer to improve a fiber reinforced composite material of Koba
(Br. 8), and that Sommer “has no length distribution, at all!” (Br. 9;
emphasis in original).
We disagree that these contentions are persuasive of reversible error
for the reasons stated by the Examiner (Ans. 8). We agree with the
Examiner that one of ordinary skill in the art would have appreciated that
Koba’s reinforcement carbon fiber bundles would have been useful for
reinforcement of a brake pad product as in Sommer (id.; see also, Sommer,
para. [0043] “carbon fibers are used in the form of coated short fiber

5 No Reply Brief has been filed.
Appeal 2010-000933
Application 11/247,545

4
bundles”). As pointed out previously, there is no claim requirement for the
fibers to have different lengths; the claim language encompasses all the
fibers having the same length. Appellants have not disputed this
determination of the Examiner, as no responsive brief has been filed.
The Examiner’s findings thus exemplify that the use of Koba’s
reinforcement carbon fiber bundles would have been nothing more than
using a known technique in accordance with its known function for the
predictable result of reinforcing the fiber brake pad of Sommer. See KSR
Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”).
With respect to dependent claim 16, Appellants argue that the
Examiner has not even alleged that “at least some of the carbon of the matrix
is converted into carbides” as recited in claim 16 (Br. 9). However, the
Examiner pointed out that the brake pad of Sommer is carbonized (Ans. 8;
see also, e.g., claim 2 of Sommer, which recites, “at least partial reaction of
the carbon in the matrix . . . to form carbides”).
Appellants have not directed us to any credible technical reasoning or
evidence sufficient to refute the Examiner’s reasonable position of
obviousness for the claimed product. Accordingly, Appellants have not
shown reversible error in the Examiner’s factual findings and obviousness
analysis of claim 15 and 16 on appeal, and we affirm the Examiner’s § 103
rejection.
ORDER
We affirm the Examiner’s decision.

Appeal 2010-000933
Application 11/247,545

5
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)(1).

AFFIRMED

kmm

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