Appeal No. 2001-1818
Application 09/048,533
of the finished product (i.e. the claimed foil) is necessarily devoid of
defects/scratches/pin windows. This is particularly questionable in view of the
first full paragraph on page 9 which refers to a ‘smaller number of pin windows’
when the protective coating is applied to the metallic film. Reference to a
‘smaller number’ of pin windows implies that some pin windows are present and,
in view of page 6, lines 21-23, pin windows are defects. (Examiner’s Answer,
page 3, line 15 - page 4, line 6).
The Appellant, on the other hand, distinguishes the product at various stages of
manufacture, asserting that an intermediate product (defined as the post-metallization
but pre-protective layer product) is the product that is necessarily devoid of defects.
(Appeal Brief, page 6, line 7 - page 7, line 1).
The Examiner points to claim 1 and states that claim 1 is drawn to a finished
product (the product comprising a substrate, a metallic film, and a protective layer), and
states that claim 1:
requires the metallic film of the finished product to be “devoid of defects”. The
examiner maintains the position that the original disclosure does not provide
adequate support for the claimed foil which comprises a substrate, a metallic film
that is devoid of defects, and a protective layer covering the metallic film.
(Examiner’s Answer, page 5, lines 6-10).
The Appellant in reply asserts that the metallic film need not forever be free from
defects, and does not preclude a film thus formed from later developing defects in
subsequent processing. (Reply Brief, page 2, lines 13-21).
A rejection for lack of support in the specification is a rejection under the written
description requirement of the first paragraph of §112. See Pall Corp. v. Micron
Separations, Inc., 66 F.3d 1211, 1219, 36 USPQ2d 1225, 1230-1231 (Fed. Cir. 1995).
The Applicant must convey with reasonable clarity to those skilled in the art that, as of
the filing date sought, he or she was in possession of the invention. The invention is, for
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