Ex Parte La Forest et al

Board of Patent Appeals and Interferences

Jan 13, 2012

11028719 (B.P.A.I. Jan. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK L. LA FOREST, SLAWOMIR T. FRYSKA,
CHRISTOPHER S. WAHLERS, DARRELL L. JOHNSON,
and ALLEN H. SIMPSON
____________________

Appeal 2009-010763
Application 11/028,719
Technology Center 3600
____________________

Before: PHILLIP J. KAUFFMAN, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, and 18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
Independent claim 1, the sole independent claim on appeal, is
reproduced below:
1. A method of manufacturing a carbon-carbon composite
brake disc with a reusable core, said method comprising the
steps of:
forming a dense carbon-carbon composite core with high
heat capacity from materials selected from the group consisting
of (i) a fibrous matrix and (ii) a fibrous matrix and a resin
binder by densifying said fibrous matrix with Chemical Vapor
Deposition/Chemical Vapor Infiltration and/or pitch infiltration,
said dense core having a density of from 1.8 g/cc to 2.05 g/cc;
recovering said dense carbon-carbon composite core
from a worn brake disc;
positioning the recovered dense core in a location within
a carbon-carbon composite brake disc; and
fixing said dense carbon-carbon composite core in place
in its location within said carbon-carbon composite brake disc.
REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1, 2, and 18 under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellants regard as the invention.
2. Claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by Scaringella
(US 5,547,717; iss. Aug. 20, 1996).
3. Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Scaringella
and Park (US 6,093,482; iss. Jul. 25, 2000).
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ISSUES
This appeal presents the following issues:
Is claim 1 indefinite?
Does Scaringella inherently disclose the steps of “positioning” and
“fixing” as called for in claim 1?
Does Park disclose a recoverable dense core as called for in claim 18?
Are components other than either (i) a fibrous matrix or (ii) a fibrous
matrix and a resin binder, excluded from the core of claim 18?
ANALYSIS
Claims 1, 2, and 18 as indefinite
Independent claim 1 calls for the step of forming a dense carbon-
carbon composite core from materials selected from the group “consisting
of”: (i) a fibrous matric and (ii) a fibrous matrix and a resin binder.
The Examiner found that the phrase “fibrous matrix” is vague and
broad because it does not specify the type of fibers or matrix, and does not
specify whether the fiber matrix is random or a pattern, and as such, the
claim does not provide the specificity required by the phrase “consisting of.”
Ans. 3, 7. The Examiner also found that a core consisting of a fibrous
matrix would not have any material to support the fibers in order to provide
the structure of the matrix. Ans. 3-4. The Examiner found that the claim
terms consisting of a fibrous matrix and consisting of a fibrous matrix and a
resin binder are “contradictory and indefinite.” Ans. 7. Based on these
findings, the Examiner concluded that claim 1 is indefinite. Ans. 3-4.
Appellants argue that the claims need not provide a “cook book-like
listing of details”; rather, as reflected in the Specification, a person of
ordinary skill in the art is conversant with a wide variety of carbon-carbon
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composite materials and would understand what is claimed. App. Br. 8;
Reply Br. 1-2; Spec. 11, para. [0044].
The term “fibrous matrix” is not vague because a person of ordinary
skill in the art would understand that the fibrous matrices may be nonwoven
fabric, woven fabric, or random fibers, and can be made by known
processes. Spec. 11, para. [0044]. While the term “fibrous matrix” may be
broad, such breadth is not indefiniteness because the limitation is
understandable. See, e.g., In re Miller, 441 F.2d 689, 693 (CCPA 1971);
Contra Ans. 3, 7.
The Examiner’s finding that a core consisting of a fibrous matrix
would not have any material to support the fibers in order to provide the
structure of the matrix is based in part on a misinterpretation of “consisting
of” as recited in claim 1. Claim 1 calls for forming a dense carbon-carbon
composite core with a material selected from the group consisting of: (i) a
fibrous matric and (ii) a fibrous matrix and a resin binder. While the
Markush group may define a closed group of materials from which at least
one material forming the core is selected, this language does not limit the
materials that form the core to only those defined in the Markush group.
(Compare e.g., “forming a core from materials consisting of…” or “forming
a core exclusively from materials selected from the group...”). Accordingly,
we cannot sustain the rejection of claim 1 or its dependent claims 2 and 18.

Claims 1 and 2 as anticipated by Scaringella
Appellants argue claims 1 and 2 as a group, and we select claim 1 as
representative. App. Br. 3-4; see 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 calls for positioning and fixing the recovered dense core
within the carbon-carbon composite brake disc.
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The Examiner found that the steps of positioning and fixing the dense
core, as called for in claim 1, are inherent steps of manufacturing a brake
disc (preform 900) as disclosed by Scaringella. Ans. 6.
Scaringella discloses a recovered dense core (904) in a location within
a carbon-carbon composite brake disc (embedded within porous portion 902
of preform 900). Scaringella, col. 12, ll. 26-37; fig. 9. In order for core 904
to be positioned as shown in Figure 9, it must necessarily be positioned and
fixed in such location as called for in claim 1. Thus, the Examiner’s finding
is reasonable, and the burden shifted to Appellants to prove that such steps
are not inherent in Scaringella’s method. See, e.g., In re Best, 562 F.2d
1252, 1255 (CCPA 1977).
Appellants assert that Figure 9 of Scaringella does not disclose the
active steps of “positioning” and “fixing.” App. Br. 3-4. This argument is
unresponsive because the Examiner did not find that the claimed steps are
shown in Figure 9; rather, the Examiner found that creation of a brake disc
as shown in Figure 9 includes posititiong and fixing as called for in claim 1.
This argument is unpersuasive because it does not cogently explain why the
positioning and fixing steps of claim 1 are not inherent in creation of
Scaringella’s brake disc (preform 900).
Appellants also argue that Scaringella does not support the
Examiner’s finding that a worker or machine/robot has positioned the
recovered dense core as in claim 1. Reply Br. 2. Again, Appellants are
unpersuasive because they do not address the rejection as articulated by the
Examiner. The Examiner did not find that Scaringella discloses that a
worker or machine/robot has positioned the recovered dense core as in claim
1. Rather, the Examiner found that such steps are inherent in the creation of
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Scaringella’s brake disc (preform 900), and could have been performed by a
worker or machine/robot. Ans. 6.
Appellants also argue that the Examiner “fails to indicate where
Scaringella teaches any of the ‘forming,’ ‘positioning,’ and ‘fixing’ steps of
claim 1.” Reply Br. 2. We cannot agree. Regarding the “forming” step, the
Examiner references Scaringella’s core 904 (illustrated in Figure 9), column
12, lines 18-37, and column 7, lines 15-21. Ans. 4. Regarding the
“positioning” and “fixing” steps, the Examiner references Figure 9 of
Scaringella. Id. Thus, contrary to Appellants’ contention, the Examiner
indicated where Scaringella discloses the referenced steps.
Appellants argue that Scaringella’s disclosure of “refurbishing brake
discs to a density of 1.85 g/cc is clearly not the same thing as a core having a
density of . . . 2.05 g/cc.” App. Br. 4. Appellants’ argument suggests that
claim 1 calls for a core density of at least 2.05 g/cc; however, claim 1 calls
for a core density ranging from about 1.8 g/cc to about 2.05 g/cc.
Consequently, Appellants’ argument is unconvincing because it is not
commensurate in scope with claim 1, and Scaringella's brake discs have a
density falling within the claimed range.
The Examiner reasoned that Scaringella’s core 904 is fixed in the
same manner as Appellants’ core 19. Ans. 6 (citing Scaringella Figure 9 and
Appellants’ Figure 1). Appellants argue that this illustrates that the
Examiner ignored the fixing step of claim 1. Reply Br. 3. To the contrary,
this illustrates that the Examiner gave weight to the fixing step of claim 1.
See Ans. 6.
The Office Action that is the subject of this appeal mistakenly
identifies Scaringella as US Patent 3,724,612; however, the Examiner
corrected this typographical error. Office Action of Apr. 11, 2008; Ans. 5.
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Appellants’ arguments on appeal against Scaringella refer to US Patent
5,547,717, and Appellants have previously acknowledged that the Examiner
mistakenly identified US Patent 5,547,717 to Scaringella as US Patent
3,724,612. App. Br. 3-4; Reply Br. 2-3; Appellant’s Argument of Feb. 14,
2008, at 4. Consequently, it is clear that Appellants had opportunity to
respond to the rejection, and Appellants’ contentions regarding US Patent
3,724,612 are irrelevant.
As such, we sustain the anticipation rejection of claims 1 and 2.

Claim 18 as unpatentable over Scaringella and Park
The Examiner concluded that it would have been obvious to modify
Scaringella’s dense carbon-carbon core to have a composition like that of
Park’s core A. Ans. 5.
Appellants argue that Park is not a reusable core in the sense of the
present invention because Park’s prepregs 4 and 4’ include layers that
presumably would create fracture lines making reuse difficult or impossible.
App. Br. 5. Appellants do not point to, nor can we find, any disclosure in
Park that the core (load bearing center structure part A) incurs fracture lines
during use due to carbon fabrics 4. Nor have Appellants submitted evidence
that such is the case. Further, as the Examiner correctly pointed out, the
dense carbon-carbon composite core of claim 18 may include fabrics and is
reusable. See Ans. 7; Park, col. 3, ll. 17-21; fig 1; see also Spec. 11, para.
[0044]. Thus, Park’s inclusion of fabrics (carbon fabric 4) in the core does
not demonstrate that the core will be rendered unusable by fracture lines.
Appellants also argue that claim 18 calls for a core consisting of a
fibrous matrix or a fibrous matrix and a resin binder, and additional
components, such as Park’s graphite powder, are excluded. App. Br. 6.
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Appellant’s argument is not commensurate in scope with claim 18. Claim
18 depends from claim 1, and as explained in the indefiniteness rejection of
claim 1, supra, the composition of the dense carbon-carbon composite core
is not closed to that of material (i) or (ii).
Accordingly, we sustain the rejection of claim 18.

CONCLUSIONS
Claim 1 is not indefinite.
Scaringella inherently discloses the steps of “positioning” and
“fixing” as called for in claim 1.
Park discloses a recoverable dense core as called for in claim 18.
Components other than either (i) a fibrous matrix or (ii) a fibrous
matrix and a resin binder, are not excluded from the core of claim 18.
.
DECISION
We reverse the Examiner’s decision to reject claims 1, 2, and 18 under
35 U.S.C. § 112, second paragraph, as indefinite.
We affirm the Examiner’s decision to reject claims 1 and 2 under 35
U.S.C. § 102(b) as anticipated by Scaringella.
We affirm the Examiner’s decision to reject claim 18 under 35 U.S.C.
§ 103(a) as unpatentable over Scaringella and Park.

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

AFFIRMED
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