Appeal 2006-2137
Application 10/375,748
column 9, lines 48-58 and col. 2, ll. 9-23. Compare Telemac Cellular Corp.
v. Topp Telecom, Inc., 247 F.3d 1316, 1328, 58 USPQ2d 1545, 1553 (Fed.
Cir. 2001)(“[R]ecourse to extrinsic evidence is proper to determine whether
a feature, while not explicitly discussed, is necessarily present in a
reference.”) with In re Baxter Travenol Labs, 952 F.2d 388, 390, 21
USPQ2d 1281, 1284 (Fed. Cir. 1991)(“Extrinsic evidence may be
considered when it is used to explain…the meaning of a reference.”). The
Appellant does not contest that the claimed dimensions of carbonaceous
particles and inorganic flake materials include the dimensions of the
conventional friction and wear modifiers and fillers.
As to the claimed proportions of solid materials, there is no dispute
that Parker teaches the claimed organic, inorganic and metallic fibers and
pulp having the claimed lengths, the claimed resin binder and the claimed
friction and wear modifiers and filers having the claimed dimensions.
Compare Answer 4-6 with Br. 3-10 and Reply Br. 1-5. Nor is there any
dispute that Parker teaches forming a slurry containing the above solid
materials using the claimed solids to water ratio for purposes of making
friction products. Compare Answer 4 with Br. 3-10 and Reply Br. 1-5.
Although, as recognized by the Examiner, Parker does not specifically
mention the claimed proportions of the above-mentioned solid materials, the
Examiner correctly finds that Parker teaches that such proportions are result
effective variables. See the Answer 4-5. Specifically, the Examiner finds
that Parker teaches that the selection of appropriate proportions of the above-
mentioned solid materials is dependent on desired manufacturing
characteristics or properties. See the Answer 4-5, together with Parker,
column 2, lines 60-66 and column 3, lines 8-12. Thus, we concur with the
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