Appeal No. 2006-0816
Application 09/997,081
embodiment disclosed in the specification. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989).
Appellants disclose in the written description in the specification that “[a]ny suitable
carbon fiber construction may be used,” which “[t]ypically” includes “woven and non-woven
carbon fiber constructions” and “may include” illustrative commercial carbon paper, cloth and
non-woven cloth (page 4, ll. 24-28). Among the illustrative commercial carbon paper is
“TorayTM Carbon Paper,” such as “TorayTM Carbon Paper 060” (id., page 4, l. 27, and page 7,
l. 2), which, as the examiner points out (answer, page 8), includes untreated or “TeflonTM
pretreated,” and appellants do not dispute the examiner’s finding (reply brief, in entirety). The
examiner further relies on the disclosure in Boccaccini of methods for the electrophoretic
deposition of metallic oxides on “Ni-coated carbon fibers . . . . in the form of continuous tows of
Ni-coated single carbon fibers” (Boccaccini, page 1002; answer, page 8), taking the position that
“the fibers fit the disclosure of the [claimed] carbon fiber construction” in the specification
(Boccaccini, page 1002; answer, pages 4 and 8). Appellants respond that the “nickel-coated
carbon fibers . . . are not a carbon fiber construction, such as, e.g., a cloth or non-woven
construction” and “[t]o the contrary, Boccaccini discloses that the fibers were in the form of
‘continuous tows,’” arguing that “[i]n contrast, the present invention concerns a hydrophilic
carbon fiber construction that may be useful as a fuel cell gas diffusion layer” (reply brief, pages
2-3). We find that the term “tow” would have had the common, dictionary meaning in context to
one of ordinary skill in this art of “[a] large number of continuous filaments collected in ropelike
form without a definite twist.”1
The examiner takes the same position with respect to the carbon coated ceramic fibers of
Illston (answer, page 8), which appellants dispute on the basis that Illston would not have taught
“a carbon fiber construction” (brief, page 6; reply brief, page 4). We find that Illston would not
have disclosed to one of ordinary skill in the art any fiber having a carbon fiber core (Illston,
e.g.,
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