Ex Parte Lam et al

Patent Trial and Appeal BoardMay 31, 2013

10898882 (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/898,882 07/26/2004 Robert C. Lam DKT02089 (0309.4090.901) 6564 67424 7590 05/31/2013 BrooksGroup 48685 Hayes Shelby Township, MI 48315 EXAMINER JACKSON, MONIQUE R ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 05/31/2013 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 ROBERT C. LAM, YIH-FANG CHEN, and KENJI MARUO ____________ Appeal 2012-000507 Application 10/898,882 Technology Center 1700 ____________ Before PETER F. KRATZ, HUBERT C. LORIN, and DEBORAH KATZ, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-3, 5, 6, 9-24, 27, and 28. We have jurisdiction pursuant to 35 U.S.C. § 6. Appeal 2012-000507 Application 10/898,882 2 Appellants’ claimed invention is directed to a friction material comprising first and second layers wherein the second layer includes at least one type of friction modifying particle that partially covers the porous base material of the first layer. The friction modifying particles comprise silica particles and have an average diameter size from about 10nm to about 150 nm. Claim 1 is illustrative and reproduced below: 1. A friction material comprising a first layer comprising a porous base material and at least one type of resin material, and a second layer comprising at least one type of nanoparticle- sized friction modifying particle that partially and non- continuously covers a top surface of the porous base material, wherein the nanoparticle-sized friction modifying particles comprise silica particles and have an average diameter size from about 10 nm to about 150 nm; the second layer having an average thickness of up to about 200 µm on individual fibers and filler comprising the porous base material, wherein the second layer partially covers the porous base material such that the second layer has a permeability substantially the same as, or greater than the first layer. The Examiner relies on the following prior art reference as evidence in rejecting the appealed claims: Lam US 6,630,416 B1 Oct. 7, 2003 Claims 1-3, 5, 6, 9-24, 27, and 28 stand rejected under 35 U.S.C. § 102(e) as being unpatentable over Lam. We reverse the stated rejection for substantially the reasons argued by Appellants, particularly as set forth at pages 9, 12, and 13 of the Appeal Brief and at pages 2-5 of the Reply Brief. In this regard, the Examiner has Appeal 2012-000507 Application 10/898,882 3 not discharged the burden to articulate an apparent reason that would have led one of ordinary skill in the art to select friction modifying particles having an average diameter falling within the claimed range for use in the friction material of Lam based on the cited teachings of Lam. In this regard, Lam discloses the use of particles having a size running from about 0.5 to about 20 microns (500 nanometers to 20,000 nanometers). In addition, Lam teaches that using too small a size particle will not result in an optimum three-dimensional structure and will fail to achieve an optimum heat dissipation property for the friction material (col. 9, ll. 1-9). The Examiner argues to the effect that the use of the terms “preferably” and “about” by Lam would have led one of ordinary skill in the art to employ significantly smaller sized friction modifying particles in Lam of an average diameter within the claimed range in modifying such a result effective variable for the purpose of optimization (Ans. 6 and 9-11). However, these assertions are speculative, at best, and lack evidentiary support particularly given that the lower limit of the disclosed range of about 0.5 microns (500 nm) greatly exceeds the minimum value falling within the claimed range of average diameter sizes of about 10 nm to about 150 nm and Lam teaches that the optimum will not be found using particle sizes that are too small (Reply Br. 3-5; Lam, col. 9, ll. 1-9). While it is generally a matter of obviousness for the skilled artisan to determine the optimum value within a disclosed range, In re Boesch, 617 F.2d 272, 276 (CCPA 1980), it may not have been obvious for one of ordinary skill in the art to find an optimum value that is significantly outside the range taught by the prior art. See In re Sebek, 465 F.2d 904, 907 (CCPA 1972) (rejection Appeal 2012-000507 Application 10/898,882 4 based on optimization was reversed because the claimed values were outside the prior art range). The Examiner’s apparent reason for modifying Lam’s friction material by modifying the disclosed friction modifying particle sizes is not supported by any other cited evidence (see generally Ans.). On this record, we agree with Appellants that the Examiner’s proposed reading and modification of Lam appears to be premised on an impermissible use of hindsight after review of Appellants’ disclosure rather than on an apparent reason to modify Lam based on the teachings found in this sole applied reference. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning[;]” citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). Rejections based on § 103(a) must rest on a factual basis with these facts being interpreted without hindsight reconstruction of the invention from the prior art. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). It follows that we reverse the Examiner’s obviousness rejection of the appealed claims over Lam. ORDER The Examiner’s decision to reject the appealed claims is reversed. REVERSED kmm