Appeal No. 2006-0816
Application 09/997,081
a variety of single and mixed component ceramic sols, as summarized in Table 1,” including
“[m]ainly graphite [22,27-32] . . . woven fibrous mats” (page 998, right col.). We find it
impossible to determine from the “System:fabric/matrix” whether the EPD method described in
each or all of references 22 and 27 through 32 would in fact enable the claimed method as
encompassed by each of appealed claims 6 through 8. Thus, we agree with appellants that the
summaries provided by Boccaccini in combination with the other teachings of this references
and of Bett would not have enabled one of ordinary skill in this art to arrive at the claimed
method encompassed by each of claims 6 through 8. See generally, In re Payne, 606 F.2d 303,
314, 203 USPQ 245, 255 (CCPA 1979) (a reference relied upon under § 103 must provide an
enabling disclosure, placing the claimed invention in the possession of the public). Indeed, there
is no substitute for the best evidence, which in this case, is the actual references summarized by
Boccaccini.
Accordingly, we find that the examiner has not established a prima facie case of
obviousness of the claimed invention encompassed by appealed claims 6 through 8 over the
combined teachings of Boccaccini and Bett, and therefore, we reverse this ground of rejection as
to these claims.
With respect to appealed claims 10 and 11, wherein the hydrophilicity of the hydrophilic
carbon fiber constructions prepared by the method of appealed claim 1 is specified in terms of
the mg of water wicked per 40mg of the hydrophilic carbon fiber construction, we agree with the
examiner that, on this record, the combined teachings of Boccaccini and Bett would have
suggested to one of ordinary skill in the art that the carbon fiber construction prepared with
Ni-coated carbon fibers according to the teachings of Boccaccini would have been hydrophilic
(answer, page 10), and would have adjusted the hydrophilicity as desired. In re Aller, 220 F.2d
454, 456-58, 105 USPQ 233, 235-37 (CCPA 1955) (“[W]here the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation.”). Appellants merely submit that the references do not teach or suggest
the claimed hydrophilicity (brief, pages 5-6; reply brief, pages 3-4).
Accordingly, on this record, we affirm the ground of rejection of claims 10 and 11 over
this combination of references.
The examiner’s decision is affirmed-in-part.
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